Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., A/K/A Smc Corporation, and Smc Pneumatics, Inc.

for failure to state appeal nandez’s granted. can be which relief

upon

AFFIRMED CORPORATION,

FESTO

Plaintiff-Appellee, KINZOKU KOGYO KA

SHOKETSU CO., LTD.,

BUSHIKI SMC Cor a/k/a Pneumatics, Inc.,

poration, and SMC

Defendants-Appellants.

No. 95-1066. Appeals,

United States Court of

Federal Circuit.

DECIDED: Nov. Hoffmann, Bar- Hoffmann & R.

Charles York, on, LLP, Syosset, argued New him the brief With plaintiff-appellee. Bodner, T. Henne- T. Glenn Gerald were Anthony E. Bennett. berger, and Obion, Neustadt, Spivak, Arthur I. P.C., Neustadt, McClelland, Maier & argued for defendants- Arlington, Virginia, were on the brief Of counsel appellants. Gholz, Robert T. Pous. L. and Charles B. on the brief James Also of counsel Boston, Dorr, Mas- and Lampert, Hale sachusetts. Henderson, Jakes, Finnegan,

J. Michael L.L.P., Dunner, Farabow, & Garrett DC, Ameri- amicus curiae Washington, curiae Law Property Property Law Association. Houston Intellectual can Intellectual Pirkey, Louis T. Association. counsel on the brief was the brief was Of him on With Jaworski, President, Virginia. Of coun- Arlington, Repass, Fulbright W. & James Knobbe, Re, Joseph Houston, R. sel on the brief was Texas. Bear, L.L.P., of New-

Martens, Olson & MAYER, Judge, Before Chief Beach, California. port NEWMAN, MICHEL, PLAGER, Lorig, Lorig, Bright & Frederick A. LOURIE, CLEVENGER, RADER, California, for amicus curiae Angeles, Los SCHALL, BRYSON, GAJARSA, LINN, Inc. counsel on the Systems, Litton Of DYK, Judges. and Circuit Roberts, John G. Jr. Cath- brief were L.L.P., Stetson, Hogan & Hartson erine E. Opinion for the court filed Circuit of counsel on the Washington, DC. Also SCHALL, in Judge Judge which Chief Radding, & Rory were J. Pennie brief PLAGER, Judges MAYER and Circuit York, York; L.L.P., New of New Edmonds LOURIE, CLEVENGER, BRYSON, Lawrence, P. T. III and Carl Stanton GAJARSA, join; and DYK in which L.L.P., Bretscher, Pennie & Edmonds MICHEL, RADER, Judges Circuit Washington, DC. III-A, join respect LINN to PARTS Atkins, Pillsbury, P. Madison & William III-B, D; and and in which Circuit III— LLP, DC, Washington, for amicus Sutro of Judge joins respect MICHEL with Patent, curiae, Copy- Trademark & PART III-E. right of The Bar Association of Section Concurring opinion by filed Circuit him on of Columbia. With District Judge PLAGER. Colton, Kendrew H. Mi- the brief were D. Conley, Etienne-Cum- chael A. Shamita Concurring opinion by filed Circuit Flaherty. M.

mings and Barbara Judge LOURIE. Bullock, Cincinnati, Ohio, Roddy M. of Opinion concurring-in-part and curiae The Procter & for amicus Gamble dissenting-in-part respect with to PART Company. MICHEL, by Judge III-C filed Circuit LLP, Chu, Morgan Irell & Manella joins. which Circuit RADER Judge California, Angeles, Los for amicus curiae Company. Hewlett-Packard Of counsel Opinion concurring-in-part and Perry Goldberg on the brief were M. and dissenting-in-part respect to PART Laura Brill.W. RADER, by Judge III-C filed Circuit Christopher Hughes, Morgan A. & Fin- which Judges Circuit and MICHEL LINN York, L.L.P., York, negan, of New New join. for amici curiae International Business Opinion concurring-in-part and Kodak Corporation; Machines Eastman dissenting-in-part with respect to PART Ford Motor Company; Company. by LINN, Judge III-C filed Circuit

Also on brief was Mark J. Abate. Of joins. Judge Circuit RADER counsel the brief were Frederick T. Boehm, Jordan, Pryor Kevin M. A. Gar- Opinion concurring-in-part and Chadurjian, Corpo- nett and Mark F. IBM dissenting-in-part with respect to PARTS ration, Armonk, New York. Also of counsel III-A, III-B, III-C, and IV filed Jeffrey Hawley, on the brief was J. East- Judge Circuit PAULINE NEWMAN. Rochester, man Company, Kodak New SCHALL, Judge. Circuit York; Roger May, L. Ford Motor Dearborn, Company, Michigan. appeal judgment This is an from the Harris, Jonathan Conley, M. Rose & the United States District Court for the Tayon, P.C., Texas, Houston, for amicus District of Massachusetts Shoketsu Jenkinson, (also S.Ct. Co., 520 U.S. Ltd. Kabushiki Kogyo Kinzoku presumption of invoking the thus and SMC Corporation) known as SMC “SMC”) under in Pneumatics, (collectively, Inc. Wamer-Jenkinson, (the range what 4,354,125 No. Patent fringed U.S. under any, if is available equivalents, B1 Patent No. patent”)

“Stoll for the claim equivalents the doctrine of (the both patent”), 3,779,401 “Carroll (“Festo”), amended? element so un Corporation Festo owned tookWe the doctrine of der infringement judgment 5.Would issues resolve certain banc to the case en in this case violate Wamer-Jenkinson’s relating to the doctrine requirement of the Supreme in the wake

remained not allowed “is Co. Warner-Jenkinson decision in Court’s play [an] as to eliminate such broad Co., 520 U.S. v. Hilton Davis Chemical entirety,” in its 520 U.S. element L.Ed.2d words, 117 S.Ct. would 1040. In other to brief parties we asked Specifically, infringement, post judgment such a rehearing Wamer-Jenkinson, questions five following “all ele- violate banc: en ments” rule? determining For the purposes Kogyo Kinzoku Corp. v. Shoketsu Festo cre an amendment

whether Co., 1381, 1381-82, Kabushiki is “a history estoppel, ates (Fed.Cir.1999) 1959-60 patentability,” reason related substantial (“Festo V”). Co. Hilton ner-Jenkinson War of our synopsis with a brief begin We Davis Chem. questions and to the en banc answers (1997), 1040, 137 limit L.Ed.2d answers affect the summary of how those over made to those amendments ed to response to appeal. In disposition of this 103, § and § 102 prior art under come 1, that “a we sub- En Banc hold Question any mean reason “patentability” or does is patentability” related to stantial reason a patent? issuance of affecting the art, overcoming but prior limited to not Wamer-Jenkinson, should 2. Under to the statu- reasons related includes other claim amendment —one “voluntary” a There- patent. for a tory requirements made in by the examiner required fore, narrows an amendment an rejection by examiner response to a to related claim for reason scope a prosecution a stated for reason —create patent statutory requirements history estoppel? history estop- prosecution to give will rise creates If a claim amendment 3. claim the amended respect to pel history estoppel, under prosecution Ques- En Banc response In to element.1 equiv- range what Wamer-Jenkinson “voluntary” claim 2, hold that we alents, under the doc- any, if is available as other the same are treated amendments the claim ele- equivalents trine of therefore, amendments; any volun- claim ment so amended? scope that narrows tary amendment related the statuto- a reason to claim a claim for explanation [for

4. When “no give will rise patent established,” ry requirements for Warner- amendment] referring cases, to use term “limitation” when to we have used both 1. In our “element” when language and the term the term “limitation” claim term “element” and See, e.g., in claim. Lemelson See Dawn referring refer to words accused device. to the 1538, 1551, States, Inc., 224 Farms, 752 F.2d v. United Kentucky 140 F.3d Equip. v.Co. U.S.P.Q. (Fed.Cir.1985) 526, (using U.S.P.Q.2d 1, 1109, 533 1009, n. n. "element”); Aviоnique, S.A. Sextant term However, (Fed.Cir.1998). the en because 817, Devices, Inc., Analog 172 F.3d “element,” we questions the term use banc U.S.P.Q.2d (Fed.Cir.1999) 1865, 1870-71 opinion. in this use that term "limitation”). preferable It is (using term history estoppel retaining with re- invention while prosecution the invention’s identity. Mfg. claim element. In essential the amended Graver Tank & spect to Co., v. Linde Air Prods. Question En Banc we hold Co. response to creates 94 L.Ed. 1097 that when a claim amendment The doctrine of is utilized range no estoppel, “ temper unsparing logic prevent ‘[t]o equivalents is available for the amended infringer stealing En from the benefit of response In Banc element. ” Question 4, “unexplained” (quoting Royal Type- invention.’ Id. we hold Inc., Rand, Remington writer Co. v. any range are not entitled to amendments (2d 691, 692, U.S.P.Q. F.2d equivalents. We do not reach En Banc Cir.1948) J.)). (Hand, In Question pursuing which will these for reasons become goals, attempts the doctrine specific clear in our discussion of the case strike ensuring paten- balance between that the before us. enjoys patent tee the full benefit of his view of our answers en banc ensuring give that the claims “fair notice” questions, judgment we reverse patent’s scope. London v. Carson 5, 6, claim 1 of the Stoll and claims 1534, 1538, Pirie Scott & 946 F.2d infringed and 9 of the Carroll were (Fed.Cir.1991). 1458-59 under the doctrine of however, can easily upset, This balance in- claim elements that were found to be equivalents, because “the doctrine of when fringed by equivalents during were added applied broadly, conflicts with the defini- during Stoll public-notice tional and functions of the patent. reexamination of Carroll statutory claiming requirement.” War- that added those elements amendments ner-Jenkinson, 520 U.S. at narrowed of the claims. Festo explanations has not established unrelated amendments; patentability ac- for these Prosecution history estoppel cordingly, range no avail- equivalents is one prevents tool that the doctrine of able for the amended claim elements. Be- vitiating func the notice cause the parties agree SMC does not tion of claims. Charles Greiner & v.Co. produce literally a device that satisfies Inc., Mari-Med Mfg., elements, judgment those claim in- (Fed.Cir. 22 U.S.P.Q.2d 1529-30 fringement must reversed. 1992). by patentee, Actions the including claim arguments amendments and made Section I opinion provides of this a brief Office, may before the Patent give rise to equivalents overview of the doctrine of prosecution history estoppel. Pharmacia prosecution history estoppel. II Section Pharms., Inc., & Upjohn Mylan Co. v. 170 Supreme discusses the Court’s decision in 1373, 1376-77, 1033, F.3d U.S.P.Q.2d Section III Wamer-Jenkinson. sets forth (Fed.Cir.1999). history “Prosecution our questions. answers to the en banc estoppel precludes a patentee from obtain IV, Section we decide appeal the before us ing equivalents under the doctrine of cov by answers applying our to the en banc erage subject matter that has been re questions to the facts the case.

linquished during prosecution of its patent 1376, application.” Id. at 170 F.3d DISCUSSION Therefore, at 1036. Equivalents I. The Doctrine of equivalents “[t]he doctrine of is subser History Estoppel Prosecution [prosecution vient to ... history] estop equivalents States, The doctrine of pre pel.” Autogiro Co. v. United vents an infringer accused from avoiding 400-01, Ct.Cl. liability infringement by for changing only U.S.P.Q. logic The minor or insubstantial details of a prosecution history claimed estoppel is that patent prosecution created a is irrelevant to sub- during prosecution, has patentee, public fairly sequent estoppel.” notifies Id. The Court record noted right has surrendered patentee by each of our peti- “[i]n cases cited within the reach particular matter as below, prosecu- tioner and the dissent patent. of the history estoppel was tied to amend- art, prior made to ments avoid

II. Wamer-Jenkinson specific otherwise to address a concern— rehearing, we focus our In this en banc arguably such as obviousness—that would attention on the effect Wamer-Jenkin- have rendered the claimed matter relating law to the doc son on our case 30-31, unpatentable.” Id. at 117 S.Ct. histo trine of 1040. The therefore saw “no Court sub- V, ry estoppel. Festo 187 F.3d at requiring rigid stantial cause for more 1959-60; U.S.P.Q.2d at see also Shoketsu invoking estoppel regardless rule v. Festo Kogyo K inzoku Kabushiki Co. change.” reasons for a Id. at 1111, 117 Corp., 520 U.S. S.Ct. (footnote omitted). (“Festo ”) (remand (1997) III L.Ed.2d 323 hand, Turning the facts at Court further consideration ing the case for that, decision). although parties noted did not light of Wamer-Jenkinson dispute pH that the limit of 9.0 was upper before the Court Wamer- art, avoid added to “the reason process an improved disclosed Jenkinson limit un- adding for the lower of 6.0 is a method purifying dyes which used clear.” Id. Presented “with the problem called “ultrafiltration.” Wamer-Jenkin- ... reveal where the record seems not to son, Dur- 117 S.Ct. 1040. including pH the lower limit the reason patentee amended the ing prosecution, the 6.0,” “place[d] on Court burden process recite that the is carried claims to holder to establish the reason pH approximately out “at a 6.0 to during patent amendment required for an 22, 117 The ac- Id. at S.Ct. 1040. 9.0.” Id. at prosecution.” pH was carried out at a process cused that courts will have to The Court stated In light Id. at 117 S.Ct. 1040. 5.0. [proffered] “decide whether the reason is facts, Court embarked these sufficient to overcome clarify proper an “endeavor to bar to Id. of the doctrine” of add- to the element 21, 117 S.Ct. 1040. ed that amendment.” Id. The Court arguments dismissed the “[wjhere explanation no also stated (the alleged infringer) Warner-Jenkinson established, ... presume the court should equivalents, that the doctrine of as estab- that the had a substantial applicant Tank, in Graver did not survive the lished patentability for includ- reason related the Patent Act. Id. at 25- 1952 revision of limiting added ing the element 27, 117 S.Ct. 1040. The Court neverthe- Therefore, “prosecution Id. amendment.” that “the doctrine of less noted its concern bar the estoppel would applied as it has come equivalents, to that equivalents the doctrine of Tank, a life of since Graver has taken on Id. Because Hilton Davis had element.” 28-29, at 117 1040. its own.” Id. S.Ct. Supreme] in ... Court proffered [the “not with agreed The Court Warner-Jenkinson pH for the addition the lower reason dispose pros- Tank did not “that Graver limit,” remanded the case Court legal as a limita- history estoppel ecution Hilton to consider whether this court Id. at equivalents.” tion on the doctrine of for the amend- However, Davis had offered reasons 30, 117 S.Ct. 1040. Court limit and to pH added the lower ment that rejected argument Warner-Jenkinson’s should be whether Hilton Davis during an amendment determine “that the reason for 566 to establish such opportunity Warner-Jenkinson Co. v. Hilton Davis

given 34, 117 Chem. 520 117 Id. at S.Ct. S.Ct. reasons. 1040, (1997), 137 L.Edüd 146 limited to rejected the other restric The Court those amendments made to overcome equivalents pro tions on the 103, § § art under 102 and or does 35-40, Id. at posed Warner-Jenkinson. “patentability” any mean reason affect- Specifically, the Court 117 S.Ct. 1040. ing patent? the issuance of a judicial “require exploration refused to Question We answer 1 as follows: equities allowing appli of a case before purposes determining For the whether equivalents,” of the doctrine of id. at cation gives an amendment rise to require refused to S.Ct. history estoppel, a re “substantial reason part alleged on the “proof of intent” patentability” lated to is not limited to infringer the doctrine of before art, overcoming avoiding prior but in 35-36, applied, could be id. S.Ct. stead includes any reason which relates to adopt “independent and refused to statutory requirements patent. for a experimentation” equitable as “an defense Therefore, a narrowing amendment made id. at equivalents,” the doctrine of statutory reason related to the 1040. The also refused to requirements patent give for a will rise to equiv limit the doctrine of “to prosecution history estoppel respect patent alents that are disclosed within the to the amended claim element. itself,” reasoning “proper that the time for ... evaluating equivalency the time of It is true that Wamer-Jenkin infringement, patent not at the time the son the Court focused on claim , was issued.” Id. at S.Ct. 1040. 37 amendments made to overcome or avoid Warner-Jenkinson, prior art. 520 U.S. at that it closing, the Court stated chose 30-34, However, 117 S.Ct. 1040. there are equivalents,” “adhere to the doctrine of statutory requirements number of that objective applied “should be as an must be satisfied before a valid can inquiry an element-by-element basis.” issue and that patentability. thus relate to Id. at S.Ct. 1040. Court noted In addition to satisfying novelty “[pjrosecution history estoppel that contin non-obviousness requirements of 35 U.S.C. ues to be infringe available as defense to §§ §§ 102 and 35 U.S.C.A. However, ment.” Id. “if the holder (West Supp.2000), 1994 & the claims must required demonstrates that an amendment be directed to patentable subject matter during prosecution purpose had a unrelat useful, claimed invention must be patentability, ed to a court must consider § as set forth in 35 U.S.C. purpose in order to decide whether Additionally, the first paragraph of 35 precluded.” Id. at § 112 requires U.S.C. the patent S.Ct. 1040. If “the holder is unable describe, specification enable, and set forth a purpose, establish such a court should the best mode of carrying out the inven presume purpose that the behind the re ¶ tion, (1994), § U.S.C. while the quired amendment is such that second paragraph of section 112 requires history estoppel apply.” would Id. at the claims set forth the matter 117 S.Ct. 1040. applicant regards as his invention and that particularly the claims point out III. En Questions Answers to the Banc distinctly invention, define the Question A. 1 ¶ 112, § 2 U.S.C. The Patent Ofi For purposes of determining reject wheth- fice will a patent application that er an amendment to a claim satisfy any creates fails to statutory one of these prosecution history “a estoppel, requirements. sub- See Man. Pat. Exam. P. (7th 1998). stantial reason related to patentability,” 2100-1 to -173 ed. rev. 1 And

567 law has been clear that amend- may be a requirements of these any one prior give made to avoid art rise to ments patent. invalidating issued ground history prosecution estoppel. E.g., War- (1994); Powder § Atlas 282 E.g., 35 U.S.C. ner-Jenkinson, 520 U.S. at 117 Inc., 1342, Ireco, 51 190 F.3d Co. v. (discussing Supply 1040 Exhibit Co. S.Ct. (Fed.Cir.1999) (holding a U.S.P.Q.2d 1943 126, Corp., Patents 315 U.S. 62 S.Ct. v. Ace an the claims were invalid because patent 513, (1942), Keystone 86 736 L.Ed. 102); § Mitsubi under 35 U.S.C. ticipated Eng’g Corp., v. Northwest 294 Driller Co. Corp., 190 F.3d Corp. Ampex v. shi Elec. (1935)). 42, 262, 747 55 S.Ct. 79 L.Ed. Cir.1999) (Fed. 1300, U.S.P.Q.2d 1910 51 prosecution In view of the functions of patent a invalid because (holding history estoppel preserving the notice — under 35 U.S.C. were obvious claims preventing pat- function of the claims and 103); Trust Co. v. § Bank & State Street recapturing from under the ent holders Inc., 1368, 149 F.3d Group, Fin. Signature subject matter that (dis (Fed.Cir.1998) U.S.P.Q.2d 1596 before the Patent Of- was surrendered subject matter re patentable cussing why prosecution no fice—we see reason 101); § Process of 35 U.S.C. quirement history not also from estoppel should arise HydReclaim Corp., v. Corp. Control relat- amendments made for other reasons (Fed.Cir. 1350, U.S.P.Q.2d 1029 F.3d patentability, ed to as described above. 1999) patent invalid because the (holding Indeed, histo- prosecution the functions of and therefore inoperative were claims fully satisfied if sub- ry estoppel cannot be utility requirement of satisfy the failed to patentability related to are stantial reasons 101); As § Worldwide Johnson 35 U.S.C. subset of patentability limited to a narrow soc., 985, 50 Corp., 175 F.3d v. Zebco Inc. Rather, substantial reasons relat- issues. (Fed.Cir.1999) (consider U.S.P.Q.2d 1607 include 35 U.S.C. patentability ed to patent claim was invalid ing whether issues, §§ 101 as well as 35 U.S.C. requirement description the written under §§ 102 and 103 issues. ¶ 1); Gentry Gallery, § Inc. v. 1473, 45 Corp., 134 F.3d Berkline that the While we do not believe (Fed.Cir.1998) (holding U.S.P.Q.2d 1498 ques itself this Supreme Court answered failing to patent invalid for claims of Wamer-Jenkinson, we do believe tion in description re comply with the written with answer is not inconsistent that our ¶ 1); Biochem, § Enzo quirement Warner-Jenkinson Wamer-Jenkinson. Inc., 1362, 52 Calgene, 188 F.3d Inc. v. applying prosecu as prior describes cases (Fed.Cir.1999) (holding a U.S.P.Q.2d 1129 “typically because were not invalid because the claims ... en claimed] previously what [was § enabled, required by 35 U.S.C. art,” prior within the 520 U.S. compassed ¶ 1); Nat’l Gypsum Co. v. added), United States (emphasis but Co., 1209, U.S.P.Q.2d Gypsum limits language no Wamer-Jenkinson (Fed.Cir.1996) in (holding to amend history estoppel satisfy the best mode failing valid art. See also to avoid ments made ¶ 1); § Mor of 35 U.S.C. requirement Heysinger, Crawford (1887) Int’l, (finding Inc. v. Chem. ton Cardinal 31 L.Ed. 8 S.Ct. (Fed.Cir. U.S.P.Q.2d 1190 history estoppel F.3d to arise 1993) operabil (holding patent response invalid because made amendments Moreover, re satisfy rejections). approach definiteness our ity claims failed ¶ 2). An re § of 35 U.S.C. consistent Wamer-Jenkinson’s quirement “does not statuto that an amendment quirement related to of these amendment infringement necessarily preclude made an amendment ry requirements is that element.” Id. patent- reason related for “a substantial Thus, if a holder ability.” 568 history that clear and surrender prosecution ments of unmistakable

can from show subject it not matter” which could not re- was motivated a claim amendment capture through equiva- the doctrine of concerns, the amendment will patentability lents); Upjohn, Pharmacia & 170 F.3d history estop- prosecution give not rise (“A 1377, U.S.P.Q.2d 50 at 1036 number of pel. during prosecution may give

activities rise history ... prosecution estoppel, includ- Question 2 B. ing arguments made to obtain allowance of Wamer-Jenkinson, should Under (citation omitted)); the claims at issue.” not “voluntary” claim amendment —one Techs., Southwall Inc. v. IG Cardinal by the examiner or made required U.S.P.Q.2d rejection by an examiner response to a (Fed.Cir.1995) (“Clear assertions for a stated reason —create during prosecution support pat- made history estoppel? entability, actually required whether or not Question as follows: We answer claim, may to secure allowance of the ... are Voluntary claim amendments treated estoppel.”); create an Texas Instruments amendments. There the same as other Comm’n, Inc. v. United States Int’l Trade fore, that voluntary amendment narrows 1165, 1174, U.S.P.Q.2d 1018, F.2d reason related to of a claim for a (Fed.Cir.1993) (holding argu- statutory requirements for a during prosecution ments made that em- give estop will rise to phasized feature one of the invention es- pel as to the amended claim element. topped asserting holder from lacking infringed that a device that feature voluntary Both amendments and amend- equiva- under the doctrine of the Patent required by signal ments Office lents). why There is no reason an amend- public subject matter has been subject ment-based surrender of matter why no surrendered. There is reason given should be argu- less force than an prosecution history estoppel should if arise subject ment-based surrender of matter. rejects a the Patent Office claim because it We also believe that our answer to this unpatentable, claim to be but believes the question is consistent with Wamer-Jen- applicant not if the amends claim arise Although kinson. unpat- because he believes the claim to be amendments, spoke “required” claim entable. Wamer-Jenkinson, amendment at issue question answer to this is con Our pH the addition of the lower limit of argument- sistent with the doctrine of “required” by rejection. prior art Arguments based made volun estoppel. The original recited an ultrafiltration tarily during prosecution may give rise to Wamer-Jenkinson, process. 520 U.S. at prosecution history estoppel they if evi 21, 117 prior S.Ct. 1040. The asserted art subject dence a Eg., surrender of matter. taught process reference an ultrafiltration Inc., Concepts, Corp. KCJ v. Kinetic a pH conducted at of above 9. Id. at 1359-60, F.3d 117 S.Ct. 1040. The amended claim recit- (Fed.Cir.2000) (concluding 1841-42 ed an process ultrafiltration conducted “at [during prosecution] “KCJ’s statements re pHa approximately 6.0 to 9.0.” Id. flect a clear and unmistakable surrender” parties dispute upper did not that the matter that cannot be reclaimed pH distinguish limit of 9.0 was added to through equivalents); Bay the doctrine of art. Id. at 117 S.Ct. 1040. er Pharm. Corp., AG v. Elan Research Court, however, was unable to discern 1241, 1252-53, U.S.P.Q.2d 1711, F.3d pH the reason for the addition of the lower (Fed.Cir.2000) (finding “through limit of 6. Id. at 117 S.Ct. 1040. [Bayer’s] statements to the Accordingly, PTO the amendment at issue filed, declarations it Bayer appears made state- to have Wamer-Jenkinson been the of the estoppel would bar pH lower to the respect voluntary that ele equivalents as to Nevertheless, [of] held that doctrine the Court limit. 33, 117 1040. pH limit ment.” Id. at S.Ct. the lower adding the amendment history es- prosecution rise to give could Wamer-Jenkinson, In 1. cases before 34, 117 1040. S.Ct. Id. at toppel. applied prosecution Supreme the Court finding of history preclude Question 3 C. equiva- under the doctrine of infringement prosecu- creates amendment If a claim lents, analyze the but the Court did under Wamer- history estoppel, tion might be scope equivalents actual of if range equivalents, of what Jenkinson history estop- prosecution available when under the any, is available i.e., the of the pel applied, extent element so for the claim equivalents by In matter amendment. surrendered amended? E.H. Elec- Freeman Weber Electric Co. 3 as follows: Question answer We 600, 65 256 U.S. 41 S.Ct. tric prosеcu creates a claim amendment When (1921), patentee had L.Ed. 1162 a claim regard to history estoppel with tion lamp amended his claim to electric element, range equivalents of there is no taught prior overcome art socket to claim element. for the amended available un- and electric bulb that were socket equivalents of the doctrine Application of by rota- together simply and locked locked completely barred to the claim element instead, recited, The amended claim tion. bar”). (a “complete that un- combination a bulb socket by compression. locked manual locked and say ques fair that the think it is We In this light 600. Id. at S.Ct. available equivalents tion amendment, did not allow the the Court applies history estoppel prosecution when ... his claim who had “narrowed directly patentee, has not been to a claim element the doc- to “resort to patent,” to obtain by answered addressed or give to the claim equivalents [and] trine of Court, where the in circumstances at least had might it have larger scope which patenta- a known amended for claim was Wamer-Jenkinson, amendment.” Id. Under the without the bility reason. case, alleged infringer more on the facts its attention

Court focused subject matter de- the exact practiced under which circumstances art, a combination prior range scribed estoppel arises than on history movement. by rotational locked the bulb might generally equivalents Thus, the Court at 41 S.Ct. 600. prosecu Id. despite existence available Warner-Jenkinson, con- precise not need to discuss did history estoppel. subject matter surrendered 30-34, The tours of the 117 S.Ct. 1040. 520 U.S. situation amendment. A similar limit of the claim upper pH did not discuss limit, Magic City in Smith v. presented 9.0, upper that the other than to note Club, 51 S.Ct. claim, was selected Kennel narrowed the at issue The invention L.Ed. 707 Id. at 117 S.Ct. prior art. overcome dog race an artificial if in that case involved equivalents, any, range The 1040. 786-87, 291. track lure. Id. upper pH for the that could be asserted art that dis- patentee overcame by the limit was not discussed Court. lure holding straight arm closed Wamer-Jenkinson statements hinged to recite a amending his claims available range that is 788-89, 291. The S.Ct. arm. Id. at history estoppel applies w7hen rigid infringer’s device used accused discussion are found in Court’s did not allow The Court Id. at arm. Id. amendments. unexplained equiv- amendments, to the doctrine patentee to resort those 1040. For S.Ct. subject matter regain specific alents to “prosecution Court held that “in order to Id. at 62 S.Ct. 513. The Court never had surrendered patentee range Id. at addressed the exact rejection.” escape might that still be available under the Club, City Kennel as in Magic In claim, amended and the “difference be- n Weber, device read on the the accused original tween” the claim and the amended art, in and of itself mandates a prior which claim, by the difference the said Court noninfringement, see Wilson finding of by patentee, have been abandoned the Geoffrey & Co. v. David Sporting Goods explicitly never defined. 677, 683-85, Assocs., 14 F.2d 904 dissenting opinion, Judge his Michel (Fed.Cir.1990) 1942, 1947-49 upon Goodyear relies Dental Vulcanite Co. equivalents (noting that the Davis, 222, (1880), v. L.Ed. U.S. encompass prior the applied cannot be 456, Schillinger, and Hurlbut v. 130 U.S. art). Supply Co. Ace Pat- In Exhibit 584, (1889), S.Ct. 32 L.Ed. 1011 for the Corp., 315 U.S. S.Ct. ents that a proposition patentee is entitled to a (1942), patentee the amended L.Ed. 736 range despite fact that general the claim at issue to overcome by of a claim has been limited prior by art cited the examiner. He did so believe, however, amendment. We do not by changing the claim to recite conductor that either these cases addresses the game in” a device that was “embedded presented Question issue in En Banc 3: machine) instead of one that (pinball table if range equivalents, any, that by” Sup- table. Exhibit was “carried available under the doctrine of 136-37, ply, 62 S.Ct. 513. The 315 U.S. a claim element has been amended patentee Court could not held by an amendment that creates thereafter, equiva- through the doctrine history estoppel. lents, coverage of accused devices in obtain issued, Goodyear As the claim in de- carried the “conductor means” was scribed “rubber or some other elastic ma- by game of imbedded in table instead Goodyear, terial” for a dental plate. opin- it. Id. It is unclear from the Court’s During U.S. at 224-25. reissue the claim in ion whether the device was accused plate was amended to describe a dental prior in by art cited the examiner his hard or “vulcanized” rubber. Id. at 228. rejection. (quoting Id. at amendment, Looking to the reissue it plainly examiner’s assertion that was Court patentee concluded “re- “old in the art an electrical con- to make garded patent to be for a manufacture by tact flexing spring by a coil as shown exclusively made of vulcanites the de- case”). already the art cited in the process.” tailed Id. The Court determined stated, Court however: infringement that there could be no where Had original Claim 7 been allowed in its product the defendant’s used celluloid. Id. form, it all upon would have read at 229-30. The did not discuss devices, accused in all the conduc- since prosecution history estoppel, simply but tor means to the coil complementary language decided that under the spring By are “carried the table.” equiva- reissued celluloid was not striking phrase from the claim and lent to “hard rubber or vulcanite or its substituting for it “embedded the ta- equivalent.” ble,” applicant restricted his claim to those the conduc- combinations which Hurlbut involved a which had means, table, tor carried on the though been reissued and which a disclaimer Hurlbut, is аlso By embedded in it. the amend- had been filed. 462- ment, he recognized emphasized 9 S.Ct. 584. The reissue added sec- claim, phrases difference between the amend two ond but did not proclaimed language. his of all that Id. 1 recited “[a] abandonment Claim con- is embraced in pavement that difference. crete laid detached blocks or (1886) (reversing judg- 30 L.Ed. 492 manner substantially in the sections, infringement stating that the Id. at S.Ct. ment of and described.” shown “arrangement 2 recited an art and the accused device involved 584. Claim leaves, between ad- equivalent, storing or its tobacco while paper, tar metal box for concrete, substantially as box); joining blocks a wooden Phoe- described Id. set forth.” purpose and for the Spiegel, 133 nix Caster Co. v. forming of blocks “the disclaimed

patentee 33 L.Ed. 663 interposing without material plastic (1890) no (holding infringe- that there was joints while their anything between accused device did not ment because the In the face of Id. of formation.” process recited, have, a the claim . “rocker- disclaimer, the the construed Court this collar-bearing, or its mechanical formed of the that the division require claims Royer Coupe, v. 146 U.S. equivalent”); ei- “effected blocks be paving concrete 166, 524, 1073 13 S.Ct. 36 L.Ed. imposition temporary or permanent a ther (1892) (determining that the defendants Id. at the blocks.” something between of infringe proper not “under the con- could 465, held that both 584. The Court 9 S.Ct. patent” of claim of the be- struction the a infringed by process claims were process they practiced lacked cause cut a concrete was used to a trowel process); the claimed Hubbell element of 469, 584. Id. at 9 S.Ct. layer into blocks. States, 77, 80, 85, 21 v. United 179 U.S. was the Court referring equivalents In (1900) 24, (using prose- 45 L.Ed. 95 S.Ct. the claims language of referring to the claim and history cution to construe 1 “or its (“substantially” in claim and discussing infringement, without finding no 2). Thus, the Court equivalents” history estoppel). prosecution of not discuss the issue did under the doc- remained equivalents that short, equivalents avail range after the disclaimer. equivalents trine simply claim element to an amended able Supreme Court was not before that in do we believe Neither ‍​‌​​‌‌‌​‌​‌​​​​‌​​​‌‌​​‌​​​‌​​‌‌‌​‌​​‌‌‌​​‌​‌​‌‌‍cites, Supreme and the Judge Michel Michel did the cases by Judge other cases noted presented discuss the issue that a claim element did not determine Court gave Although a court Question an amendment amended in En Banc was history estoppel carefully consid prosecution “explicit rise to and must follow equivalents. See range Court, a entitled to see language ered” Schalicke, States, v.Co. Cal. Stone-Pav Corp. v. United Stone Container Artificial 391, 401, 407, 30 L.Ed. 471 7 S.Ct. 119 U.S. (Fed.Cir.2000), 1345, 1350 none of 229 F.3d (1886) infringe- that there was no (stating consti by Judge Michel language cited which it is any construction ment “under lan carefully considered explicit tutes claims”); v. Fay give possible range equivalents regarding guage 408, 420-21, Cordesman, 3 S.Ct. 109 U.S. gives when a claim amendment available (1883) 236, (finding that the 979 27 L.Ed. history estoppel. prosecution rise to material elements lacked accused device has not Supreme Court 2. Because the discussing without the claimed inventions range fully addressed estoppel or the doc- history prosecution prosecution once that is available Carrigan, v. Shepard equivalents); trine of independently must applies, we estoppel 493, 593, 597-98, L.Ed. S.Ct. 116 U.S. specifically Congress the issue. decide (1886) in- judgment (reversing to resolve is Circuit created the Federal prior art noting that fringement and law, Markman v. unique sues depicted skirt the accused device Instruments, Inc., 370, 517 U.S. Westview plaited band without a “fluted or protector (1996) 134 L.Ed.2d 577 border,” described while 97-312, pp. 20-23 H.R.Rep. No. border); (citing Sutter protector with such skirt (1981)), prosecu- 530, 541-42, regarding those such as Robinson, S.Ct. 119 U.S. v. amended, judicially which is a once an element of a claim is no history estoppel, doctrine, equivalent Hormone Research of that element can be asserted. created Genentech, Inc., Found., LaBounty, U.S.P.Q.2d 904 F.2d 867 F.2d Inc. at (Fed. Decker, 1558, 1564, U.S.P.Q.2d at 1999. In Black & Inc. v. Hoo Cir.1990). Center, contemplated Congress ver Service (Fed.Cir.1989), “strengthen Circuit would 1258-59 the Federal system way in such a that an during United States we held amendment made growth in technological prevent finding did not as to foster Markman, infringement equiva under the doctrine of dustrial innovation.” such as the although 1384. Issues lents. We reasoned that properly infringement in this case are amendment would one before us bar under for this court to answer with “its the doctrine of respect reserved Warner-Jenkinson, expertise.” a device had special similar art that amendment, (reserving provoked 117 S.Ct. 1040 his explicitly tory for the Federal Circuit the task did prevent applica all test(s) Id.; formulating proper for in equivalents. tions the doctrine of USA, fringement equiva under the doctrine of Corp.; see also Dixie Inc. v. Infab lents). 1968, 927 F.2d 17 (Fed.Cir.1991) (noting 1970-71 that prose The Circuit first addressed the Federal history estoppel cution should not cause “a equivalents that is available when range of preclusion equivalence”). total Similar history applies Hughes prosecution Air- ly, in Manufacturing Modine v.Co. Unit States, 1351, 717 F.2d Co. v. United craft ed States International Trade Commis (Fed.Cir.1983) U.S.P.Q. (“Hughes 219 473 sion, 1545, 1555-56, U.S.P.Q.2d 75 F.3d 37 I”). case, that, recognized In that we (Fed.Cir.1996), we vacated the Circuit, prior to creation Federal holding infringement ALJ’s of lack of un regional circuits had followed a flexi- some der the doctrine of due to history approach prosecution ble bar because, prosecution history al estoppel had estoppel, applied whereas others though range “the of equivalency available complete strict rule of surrender when limited, by estoppel, prosecution ... prosecution history estoppel applied. Id. the prior art do not eliminate 1362-63, U.S.P.Q. at F.2d at equivalents.” apply prosecution 481-82. dеcided to We bar, history estoppel stating as a flexible I, year Hughes Less than a after howev- prosecution history estoppel “may er, five-judge panel of this court decided limiting have a on the effect” doctrine of Kinzenbaw v. Deere & 741 F.2d spectrum “within a ranging (Fed.Cir.1984). 222 U.S.P.Q. 929 great to small to zero.” Id. at claimed invention in Kinzenbaw was “[a]n U.S.P.Q. F.2d at 481-82. apparatus forming planting seed fur- LaBounty Manufacturing, Inc. v. Unit- rows.” Id. at 741 F.2d U.S.P.Q. ed States International Trade Commis- at 932. element at sion, 1572, U.S.P.Q.2d 867 F.2d 1995 issue related to “a pair depth gauge (Fed.Cir.1989), example is an of the flexi- compacting wheels” that controlled the approach. LaBounty, depth ble bar we vacat- the furrow created the planter. ed the noninfringement determination of During prosecution, Id. in order to over- International Trade rejection Commission come an examiner’s and to obtain (“ITC”) patent, and remanded the case to the ITC his the inventor narrowed his proceedings for further by specifying, because the ad- claims among things, other (“ALJ”) judge gauge ministrative law had failed that the wheels had to have a radius determine the his- less than that of the radius of the blades of (called “discs”). tory held, instead, estoppel and planter had Id. On device, gauge proach, according wheels had a accused which court refused than that of the Id. greater speculate radius discs. whether a narrower amend- 383, 222 U.S.P.Q. F.2d ment would have been allowed. The other accused Consequently, device line spectrum followed flexible or ap- result, literally infringe. proach, could not As which recognized that amendments (Deere) in- patentee sought prove invariably preclude did not equiva- all ” under fringement equiva- Chisum, the doctrine lence .... 5A Donald S. Chisum § Id. at 18.05[3][b], lents. on Patents at 18-492 U.S.P.Q. Hughes at 932. The district court con- Soon after I and Kinzenbaw were prosecution history they cluded decided were the of comment relying Deere from precluded upon Review, the American University Law Id., U.S.P.Q. annually reviews the work of the that, at 933. The court determined as far Federal Circuit. The commentators stat- concerned, gauge as the wheels were ed that the Federal Circuit’s “two diver- intentionally gent inventor had narrowed his authority prose- lines of dealing with claims, it permit refused to Deere to history estoppel,” cution Hughes line avoid, through the doctrine of equivalents, line, and the given Kinzenbaw had rise to limitation placed that the inventor had ever-increasing “uncertainty and confu- on his claims. Id. in patent litigation. sion” Douglas A. al., Strawbridge et Area Summary, Patent appeal, urged On Deere Law Developments in the United States history estoppel apply did not because Appeals the Federal Circuit inventor’s limitation of his claims to de- 1986, During 861, 36 Am. U.L.Rev. 887-88 gauge vices which the had a wheels (1987). commentary The began that after smaller radius than that of the discs was Hughes I and Kinzenbaw were decided unnecessary distinguish prior art. See, e.g., Smith, has Gregory continued. J. Specifically, only Id. Deere contended that The Federal Circuit’s Modem Doctrine of portion that provided that Equivalents Infringement, in Patent 29 the radius of the gauge wheels had to 901, (1989) (noting Santa Clara L. Rev. 921 exceed the distance from axes of the that there at least an “apparent conflict” edges wheels to the rear of the discs was Kinzenbaw); Note, Hughes between I and necessary in order to render the claims To Bar or Not to Bar: Prosecution Histo- patentable prior over the art. Id. The Wamer-Jenkinson, ry Estoppel 111 After five-judge panel rejected argu- Deere’s 2330, (1998) (stating Harv. L. Rev. 2336 ment. It stated: decline to “We under- Hughes I line “appear[s] of cases whether, the speculative inquiry take if to be irreconcilable” with the Kinzenbaw ... only had made nar- [the inventor] cases). line of claim, rowing limitation in his the examin- er nevertheless have would allowed it.” Wamer-Jenkinson, panels Since of this Id. The court therefore affirmed the dis- question court have continued visit the judgment noninfringement. trict court’s range that is available 391, 222 U.S.P.Q. Id. at at 934. prosecution history estoppel after has been approach prosecution history in particu es- determined exist. Two cases toppel by that was followed in Kinzenbaw lar were remanded prompted following observation for light further consideration Warner-Jenkinson. Honey shortly “Beginning well, Professor Chisum: af- Inc. v. Litton Inc., 1240, Sys., ter its creation in the Federal 520 Circuit (1997); developed authority two lines of on the L.Ed.2d 323 States v. 137 United estoppel Hughes of an based on an 117 amend- Aircraft argument distinguished ment or L.Ed.2d In the S.Ct. Inc., Systems, Honeywell, art. line Inc. v. ap- One followed strict Litton U.S.P.Q.2d Hughes tween the I and Kinzenbaw lines 140 F.3d (Fed.Cir.1998), circumstances, authority. this court deter these Under any given had mined that Wamer-Jenkinson it is unclear whether case that an “longstanding doctrine approach Kinzenbaw changed apply court will of that recapture sub estoppel bars accepted opposed generally as to the more during actually surrendered ject matter Hughes approach. importantly, I Just as noted that “the The court prosecution.” Hughes approach applied, even if the question reach the did not Supreme Court uncertainty there is as extent of proper scope Thus, that will be held to exist. surrender limitation,” and thus concluded amended two Fed Professor Chisum has discussed our did not affect that Wamer-Jenkinson Studs, cases, Inc. eral Circuit Sun v. ATA already jurisprudence on the established Inc., Leasing, Equip. 872 F.2d 1457, U.S.P.Q.2d at 1327. issue. Id. (Fed.Cir.1989), U.S.P.Q.2d 1338 and Envi analysis A and conclusion were set similar Instruments, Inc. ronmental v. Sutron Hughes forth in Co. United Aircraft Corp., U.S.P.Q.2d 877 F.2d States, 1470, 1476-77, 46 (Fed.Cir. 1989), illustrating “pre (Fed.Cir.1998) 1289-90 ap dictive difficulties of the flexible II"). infringer in (“Hughes alleged Chisum, 18.05[3][b][ii], § proach.” supra, argued that case that Warner-Jenkinson vein, at 18-505 to 18-506. a like it has prosecution history estop- mandated that that “the been stated criteria used any pel complete preclude act as bar estop- court to determine the effect of an infringement under the doctrine finding of ping amendment have not been set forth II, Hughes 140 F.3d at systematic way” clear or and that 1476, U.S.P.Q.2d rejecting at 1289. In “[t]he Federal Circuit’s well-known obser argument, this court stated that there this vation that ‘[djepending on the nature and a determination as to the exact must be amendment, purpose may of an it have a “subject patentee actually matter the sur- zero,’ limiting great effect from to small to 1476-77, U.S.P.Q.2d Id. at rendered.” example, what tells little about at 1290. Because the accused device did relationship is between the ‘nature and range not “fall within the of matter purpose’ limiting of an amendment and its surrendered,” infringement under the doc- Apple, effect.” Ted Enablement Estoppel: equivalents trine of was not barred. Id. History Should Prosecution Estoppel in rehearing The court denied en banc Arise When Claims Are Amended To II, Hughes both Litton over dissents Rejections?, Overcome Enablement Sys., from the Litton denials. Inc. v. Computer High Santa Clara & Tech L. J. Inc., Honeywell, 145 F.3d (footnotes (1997) omitted). 107,128 (Fed.Cir.1998); U.S.P.Q.2d Hughes States, Co. v. United Today, question we revisit the Aircraft (Fed.Cir.1998). we in I Hughes first addressed and come to a proper different conclusion as to the II Hughes Both Litton and follow the scope that is available when I Hughes approach prosecu- flexible bar prosecution history estoppel applies than history estoppel. tion In that regard, they in prosecu we did that case. We hold that are with consistent Professor Chisum’s ob- “[mjost history estoppel complete acts as a pan- servation that Federal Circuit bar to the of the doctrine el decisions from 1984 to 1997 followed the equivalents when an amendment nar approach, flexible has had been initiated scope rowed the of a claim for a reason by Hughes Aircraft[Hughes in 1983 I ] ” Chisum, patentability. decision.... related to Our decision to supra, 18.05[3][b][i], Nevertheless, reject § in approach adopted at 18-497. flexible bar this nearly twenty court repudiated Hughes years has neither Kinzen- comes after baw nor inconsistency- experience performing reconciled be- of our role as the appeals court of matters. approach, sole bar we conclude that its “worka- Moreover, years, pat- bility” In those the notice function of is flawed. in overruling I, Hughes paramount, ent claims has become and the we are not acting grounds “on certainty scope parties.” need for as to the advanced SMC and amici curiae protection emphasized. prob- urged has been A have us to follow the approach strict approach lem with the flexible bar is that es- toppel virtually adopt today. we impossible predict it is In Banc before Opening Br. Defs.-Appellants appeal the decision on where the line of SMC al., 49-53; Corp., et at see also Br. surrender is drawn. The patentee would Amici Curiae Int’l Bus. Corp., Machs. just draw the line slightly or short of Co., Eastman Kodak and Ford art, Motor prior leaving range a wide at 14-20 (arguing range that no of equiva- by prosecution untouched his- lents should be available for narrowing tory estoppel. The infringer, accused amendments). however, would draw the line close to the claims, leaving literal terms of the little or We also believe that the flexible bar range no These consider- approach “poses a direct obstacle to the ations, think, we contribute to the difficul- objectives.” realization of important Pat ty under the flexible bar approach pre- Union, terson v. McLean Credit 491 U.S. dicting degree certainty the 164, 173, 109 S.Ct. 105 L.Ed.2d 132 surrender will be found when (1989) (setting forth justifi the “traditional prosecution history estoppel applies. case”). for overruling cation[s] objectives effect, These include giving reaching our holding, we are mindful when history estoppel arises, Court’s teaching that bind- narrowing to a operation amendment’s as a ing precedent lightly is not to be discard- subject matter, see, disclaimer of e.g., Ex ed. The Court has stated that stare deci- hibit Supply, 315 U.S. at 62 S.Ct. evenhanded, sis “promotes predictable, 513, preserving the notice function pat development princi- and consistent of legal claims, see, Warner-Jenkinson, e.g., ent ples, judicial reliance on fosters decisions promot and contributes to perceived the actual and law, see, ing certainty e.g., Mark integrity judicial process.” Payne man, 517 U.S. at 116 S.Ct. 1384. The Tennessee, objectives realization of these help cannot 115 L.Ed.2d The Court but be uncertainty frustrated inher also has stated that while from time to approach. ent the flexible bar governing time it has overruled decisions that are badly “unworkable are rea- By making prosecution history es soned,” rarely it grounds has done so “on bar, toppel act a complete as we enforce not parties.” advanced the United the disclaimer effect of a narrowing claim States v. Int’l Bus. Corp., Machs. 517 U.S. By claims, amendment. narrowing his 843, 856, 116 S.Ct. 135 L.Ed.2d 124 patentee disclaims matter encom (1996) (citations omitted). passed by original the E.g., claims. Ex that the current at Supply,

We believe state of the hibit 315 U.S. 62 S.Ct. 513; Club, regarding scope equivalents Magic City law the that at Kennel U.S. prosecution history 291; available when Shepard, es- 51 S.Ct. at U.S. toppel applies is “unworkable.” In patent (noting patentee S.Ct. 493 that a law, we think that qualify rules as “worka- who has narrowed a claim during prosecu they ble” when can upon pro- be relied to “enlarge tion cannot patent by argu her duce give consistent results and rise to a ment to falling so as cover elements not terms, that body provides guidancе explic of law to the within and its which she had abandoned”). marketplace on itly Supreme how to conduct its affairs. As the Court experience stated, After our long “By patentee] with the flexible has amendment [the literal clearly defined its protection is the differ- emphasize[s] recognize[s] and terms. claim and original between the” ence ... proclaim[s] amended claim “and aban- Supreme recognized Court the val- in that donment of all is embraced complete ue of a bar Warner-Jenkinson at Supply, 315 difference.” Exhibit U.S. presumption when it discussed “must be 62 S.Ct. 513. Amendments when history estoppel applies prosecution and against the inventor strictly construed Court, unexplained. an amendment upon as public, and looked

in favor of the “that claims do indeed keeping in mind Hubbell, nature of disclaimers.” func- a definitional and a notice serve both 83-84, 21 24. In order to at S.Ct. U.S. tion,” if not presumption held that strictly against such amendments construe rebutted, history “prosecution estoppel can scope no patentee, application of the doctrine would bar a claim element that was be afforded to Id. at equivalents as to that element.” [of] con- patentability narrowed because added); see (emphasis S.Ct. Although we do not understand cerns. Question 4. to En Banc also Answer infra spoken cases to have Supreme older Court equiva- to the complete A bar doctrine us, think directly question to before we would unexplained lents for amendments suggest- cases language used those stated, defer- give, “proper as scope ing a strict measurement of the defining the role of claims in ence to notice,” with our answer equivalents is consistent providing public invention question. Warner-Jenkinson, to this 520 U.S. similarly A complete S.Ct. 1040. bar range Allowing some the definitional and notice functions serves benefit of the gives patentee some explained give when amendments rise disclaimed, to what was a benefit doubt as history Regardless estoppel. A public’s expense. at the comes explained the amendment is of whether complete therefore best serves the no bar if narrows unexplained, the amendment of patent tice and definitional function claim a related reason object of the law claims. “The complete bar to the doc- patentability, de requiring patentee specifically [to equivalents provides public trine of secure to invention] fine his is not patentee with definite notice as to the entitled, him all to which he is but scope of the claimed invention. open apprise public of what is still complete A bar also eliminates Ortmayer,

them.” McClain v. public’s speculate need to 35 L.Ed. 800 by an subject matter surrendered amend equivalents, ap But “the when doctrine a claim ment that narrows reason plied broadly, conflicts with the definitional public-notice statutory patentability. related to There are several functions claiming requirement.” aspects Warner-Jenkin

son, inquiry speculation If where is not allowed. noted that we prosecution history as a com The Court has estoppel acts inquire into the correctness of the bar to of the doctrine of need plete rejection to a claim patentee and the examiner’s led equivalents, both the Warner-Jenkinson, public scope are on notice as to the of amendment. (citing Magic n. 117 1040

protection provided by a claim element at 33 S.Ct. Club, 282 U.S. at patenta- City narrowed for a related to Kennel reason 291). rejection Even if the is im bility. patentee public and the can S.Ct. may give the amendment still rise prosecution history, public proper, look to the a record, history estoppel. Id. In any prosecution if to prosecution to determine addition, any speculate we do not as to whether estoppel arises as to so, any given element. If that element’s of amendment was material to the scope Markman, rights.” because that limits these “[t]he of by them all material patentee makes (quoting U.S. 116 S.Ct. 1384 Mer- Hubbell, claim.” Yeomans, restricted form of his rill v. U.S. L.Ed. (citations omitted). (1876)). U.S. spec- to In view of the reluctance entertain bar, bar, A complete unlike a flexible aspects prose-

ulative other of inquiries certainty thus lends to process of de- history estoppel, speculative inqui- a cution termining scope protection of afforded required not be to determine the ry should bar, by patent. complete aWith both available for a scope equivalents of still the public patentee and the know that once claim element narrowed for a reason relat- by an element a claim of is narrowed A patentability. complete ed to bar avoids patent- amendment for reason related to inquiry. such ability, scope of coverage element’s approach, the flexible bar howev- Under will not beyond extend its literal terms. er, range equivalents the exact of when uncertainty There is no or speculation history estoppel applies is vir- range to exact unascertainable, only the tually prior might certainty be available. This aids outer marking art limits of claim’s both the public patentee and ascer- scope. precise There is no metric to de- taining scope the true and value of the subject given matter was up termine what patent without having litiga- to resort original claim and the amend- between by analysis tion to obtain a case case Consider, for a claim example, ed claim. subject what can matter the claims cover. originally recited a value “less than bar, complete public With a neither the twenty” that was amended to recite a val- patentee required pay nor the rejection light ue than five” in of a “less litigation transaction costs of in order to disclosing art a value of fifteen.2 prior over scope subject determine the exact mat- subject matter was abandoned under What patentee pat- ter the abandoned when the approach? patentee the flexible Is the that are five limited to values closer to entee amended the claim. fifteen, than or can he reach value less Thus, complete approach, under the bar encompass patentee

than fifteen? Can the technological advances that would have ten, by equivalents a value of or would that unknown, lain in the undefined zone of the surrendered recapture part of a around the literal terms narrowed impossible, Put it is even simply, matter? approach claim under the flexible bar will example, public under this basic for the go undeveloped not wasted and due to fear patentee precise to determine the litigation. public will be free to range available under the improve patented technology on the approach. flexible bar This creates design being around it without inhibited uncertainty enterprise “zone of changes the threat of lawsuit because experimentation may only enter at the risk possibly scope fall within the could claims ... infringement [and which] after a claim element has equivalents left discourage[s] invention a little less for a reason been narrowed amendment unequivocal than foreclosure of the field.” patentability. certainty This related Markman, 517 U.S. at 116 S.Ct. 1384 improvements will investment in stimulate (quoting Binney United Carbon Co. v. & the risk of design-arounds because Smith (1942)). infringement will be easier to determine. public L.Ed. 232 “The [would] difficulty counseling general, the deprived rights supposed belong it, on the being clearly public patentee to without told what it is and the disclosing pH problem presents art 2. A similar itself under the 9.0 overcome Warner-Jenkinson, Wamer-Jenkinson, at claim above 9.0. 520 U.S. facts of where the upper pH 117 S.Ct. 1040. was amended to recite an limit of established, explanation is an amended ele- Where no by provided protection would prosecution history estoppel .... under the com- reduced greatly ment is the doctrine application bar the certainty due to the [of] approach bar plete of equivalents as to that element. produces. such bar predictability Warner-Jenkinson, 33, 117 520 U.S. at overriding no benefit Finally, we see added). In answer (emphasis Although a approach. the flexible bar question, we affirm what we stated ing this patentee more pro affords the flexible bar Sextant, at equivalents, under the doctrine tection Wamer-Jenkinson “the at 1875: when the benefit out do not believe we prosecu ... presumption applicable, uncertainty. The Su weighs the costs of history arising therefrom is estoppel noted Wamer-Jenkinson preme Court completely application total and ‘bars’ the has “taken equivalents doctrine of that the equivalents as to the of the doctrine own, by the of its unbounded on a life limitation.” amended Warner-Jenkinson, patent claims.” complete A 117 S.Ct. 1040. Question E. equivalents, reins in the doctrine bar judgment infringement Would scope more discernible and making claim this case violate Wamer-Jenkinson’s notice function of claims. preserving the requirement application that the application that the The Court indicated allowed equivalents doctrine of “is not history complete prosecution bar allowed play [an] such broad as to eliminate “reasonable limits on the estoppel place entirety,” element in its and further insu equivalents, doctrine of words, 117 S.Ct. 1040. other would any feared conflict late[ ] the doctrine judgment infringement, post such a Act.” Id. with the Patent Wamer-Jenkinson, “all ele- violate the equiva of a bar to doctrine complete ments” rule? gives claim lents whenever a amendment question We do not need to reach this history estoppel simi rise to in our for reasons which will become clear conflict and tension larly reduces the be specific discussion of the case before us. protection afforded tween the Accordingly, day any we another leave for public’s and the equivalents the doctrine of discussion of the “all elements” rule. patent. of a ability to ascertain Infringement IV. of Festo’s Patents Question D. I by assignment Festo is the owner explanation [for When “no claim patent, Stoll and the Carroll both of established,” Warner amendment] magnetically coupled which are directed -Jenkinson, U.S. at cylinders. rodless sued Festo SMC invoking presumption thus United States District Court for the Dis- under Massachusetts, trict of alleging infringe- Warner-Jenkinson, range what patents. jury ment of the found that any, equivalents, if is available under infringed SMC under the Stoll the claim the doctrine of dam- and assessed so amended? element Corp. Festo v. Shoketsu ages accordingly. Question We answer as follows: Kogyo Kinzoku Kabushiki No. 88- explanation When for a amend no 1814-PBS, (D.Mass. slip op. at 2-3 Oct. established, range of equiva ment is no (“Festo 1994) ”). (Judgment) (Judgment) for the claim element lents is available so previously granted The district court had amended. summary judgment Festo’s motion for is answered Wamer- question cylinders This certain models of SMC’s rodless Jenkinson: patent, also under infringed the Carroll v. equivalents. Corp. cylinder, magnetically Festo outside of the and is the doctrine of Co., Kogyo Kinzoku Kabushiki Shoketsu coupled piston. magnetic The at- 88-1814-PBS, at 14-15 slip op. No. traction the sleeve piston between and the 1994) (Order) (“Festo (D.Mass. 11, July piston causes the sleeve to follow the when ”).3 (Order) along cylinder. it moves the inside of the objects The move sleеve is used to on a Technology A. The Patents and at Issue conveying system. Both the Stoll and the Carroll 1. The for the Stoll magnetic cylinders. rodless patent disclose 28, 1980; May was filed on the patent composed The claimed devices are of three issued on October The following 1982. a parts: piston, cylinder, basic and figure, only drawing in the patent, terms, piston is on the sleeve. basic (18), (10), shows the sleeve cylinder cylinder, inside of the and is moved (16) pressure. piston fluid under The sleeve is on the and the of the Stoll device: (24) cylinder, piston pair “guide rings” is driven are a on the Inside 11. col. 11. pressurized patent, piston. fluid. Stoll col. Id. at 26-30. As guide rings, piston through patent explains, 13-19. As the travels which surface, project beyond piston’s “pass cylinder, magnetically coupled sleeve piston along along [cylinder] the internal surface follows the outside 3,11. fit,” sliding help id. at col. cylinder. Id. prevent impurities dirtying pis- from (20) magnets includes piston The ton, 3,11. 51-55. id. col. sealing rings” two “elastomeric Id. rings pre- 11. device is sealing at col. 20-32. sleeve Stoll mag- any impurities getting multiple parts vent on the made of that include (32) made of a piston. body Id. at col. 11.48-55. There also nets outer court, “GVR”). appeal panel sequence events called a Festo 3. On the first to this III, judgment infringement under affirmed the 520 U.S. at 117 S.Ct. 1240. On the Stoll remand, the doctrine of of both panel again of this court affirmed patents. Corp. and Carroll Festo v. Shoketsu infringement judgment the district court's Co., Kogyo 12 F.3d Kabushiki Kinzoku the doctrine of Festo under U.S.P.Q.2d (“Festo II”). (Fed.Cir.1995) Corp. Kogyo Kabushiki Shoketsu Kinzoku decision, Court decid After U.S.P.Q.2d (Fed.Cir.1999) petitioned ed SMC had Wamer-Jenkinson. ( IV”). petitioned SMC then “F esto certiorari, the Court for a writ of which the banc, granted. rehearing we en granted, vacating judgment and re V, F.3d at Festo manding the case to this court further (a light consideration in of Warner-Jenkinson 3,11. magnets Id. at col. first annular will be free of material magnetizable mag- impurities, interference said According patent, 60-65. material on sleeve encir- netizable wherein said driven member includes “magnetic magnets allows cles the sleeve’s magnetiza- cylindrical sleeve made of vicinity in of the driven fields leakage tube, ble material and encircles said minimum,” pre- kept to assembly to be having plural axially said sleeve braking Id. any unwanted forces.

venting spaced permanent mag- second annular 2,11. at col. 24-35. magnetically nets affixed thereto and in patent representa- 1 of the Stoll Claim attracting perma- relation to said first Festo, claims asserted and is tive of the magnets, nent annular patent of the Stoll at issue spacing and second means said second appeal: permanent magnets annular axi- said having a arrangement 1. In an hol- relation, ally spaced radially inner and cylindrical driving low tube magnets being surface said oriented driven members movable thereon for close to the external of said surface articles, improvement conveying tube, comprising having said sleeve end face means tube is made of a non- wherein said sealing rings axially with second located material, magnetic permanent outside said second annular is a driving pis- wherein said member magnets wiping the external wall movably ton on the inside of mounted surface of said tube driven as said mem- tube, having piston piston said said along ber is moved said tube response body plural axially spaced, per- first driving to a movement piston of said magnets encircling manent annular said thereby any impurities may cause piston body, present pushed be on said tube to be including piston said further first along per- said tube so that said second spacing permanent first means said magnets manent annular will be free of relation, magnets spaced axial said impurities. interference from said radially peripheral surface of said patent, Stoll col. 1. 23—col. 1. 18 in- magnets being oriented close to the added). (paragraphing tube, ternal wall surface of said piston including plural said further pat- for the Carroll guide ring encircling piston said 17, 1972; means February ent was filed on body slidingly engaging said inter- issued on December 1973. A nal wall and reexamination certificate issued on Oc- rings axially sealing

first located out- tober with amended claims. The rings side guide wiping said said Carroll directed the same tech- piston along nology internal wall as said moves patent. as the Stoll An exterior thereby any impuri- said tube to cause view of the Carroll device is shown may present ties that Figure be said tube to in 1 of patent, repro- the Carroll pushed along said tube so that said duced below: embodiment, articles, A moving In the disclosed the sleeve 9. device for comprises: which (28) permanent magnet as a is described cylinder a hollow formed of non-fer- (30) gripping

that is attached to a device having opposite rous material and axial part and that surrounds of the exterior ends; 2,11. cylinder patent, the Carroll col. piston a mounted in the interior of the patent, As in the of the 17-26. device Stoll cylinder reciproeatingly hollow and slid- the sleeve of the Carroll moves therein, piston including able the a cen- a along cylinder response mag- axially mounting disposed tral member piston cylin- netic which moves inside the cylinder, has a piston der. Id. Each end of the plurality cylindrically-shaped per- sealing ring groove. in an annular Id. set magnets on the central manent mounted 2,11. patent, According at col. 1-16. axi- mounting spaced apart member and inner sealing rings “engage wall other, ally magnet each hav- from each cylinder tight and form fluid seal” ing axially there-through a bore formed air, compressed or other that allows receiving mounting the central mem- (12) fluid, injected port into pressurized ber, (14) cylinder on the outside of the to move pair least one of end members piston in either direction. Id. at col. mounting mounted on the central mem- polarization 11. 42-59. The opposite axial sides disposed ber and piston magnets, pair on the and the sleeve of the magnets plurality cushion members formed resilient sleeve, which is located on the causes material, being sit- the cushion members cylinder, to follow the move- outside of the opposite uated near axial ends is located on the piston, ment of the help pre- mounting central member to 2,11. cylinder. Id. at col. 17- inside of the damage piston when the vent cylin- piston contacts an axial end der, pat- 9 of the reexamined Carroll Claim representative

ent is of the claims asserted sealing rings pair and a of resilient ends of the opposite near axial by Festo: situated Second, portion of the sleeves of engaging the outer mounting member central made of an aluminum fluid-tight to effect a seal SMC’s devices is cylinder therewith; parties agree a material that the alloy, Thus, material. while magnetizable not a mounted on the exterior of body and claims a the Stoll discloses reciprocatingly slid- cylinder and hollow material, magnetizable made of a sleeve thereon, able have sleeves that are not the SMC devices of annu- body including plurality magnetizable made of a material. magnets sur- larly shaped permanent cylinder spaced apart rounding the other, permanent magnets each History B. Prosecution the Patents at piston body being polarized Issue couple body magnetically so as to patent application 1. The Stoll whereby movement of the piston filed the United States as the U.S. cylinder causes a corre- piston inside counterpart patent applica- of a German body sponding movement of the outside filed, tion. As claim of the Stoll cylinder, initially read: body including pro- further means holding body on the an

vided thereon for 1. A linear motor for use in a con- moved; article and to be veying system, controlling means for the admission of by a being operable pres- said motor pressure cylinder fluid into the and ex- comprising a sure medium and tubular cylinder moving haust fluid from the part pres- connectible to a source of the cylinder, piston medium, sure per- the attractive forces between the piston a which is slidable in said tubu- magnets piston manent of the and the part sealing lar and which has means at body being such that movement of the [wjiping engagement each end for with piston corresponding causes movement part internal surface of the tubular body predetermined of the below a load a pressure and so as to form seal for the body on the and such that above said medium, predetermined load movement of the piston corresponding does not cause assembly a driven which is slida- body. movement of the part ble on the tubular and which has [w]iping engage- means at each end for col.l, 1. patent, Reexamined Carroll 34— (additional ment with an col. external surface of the paragraphing 1. 37 add- ed). part, tubular 3. The devices that were SMC found piston assembly and the driven

infringe the un- patents Stoll and Carroll carrying magnet arrange- each a drive der the doctrine of have two cylindrical ment in the form of a hollow notable differences from the structures assembly, First, patents. claimed in the the SMC magnet arrangement ra- having each devices, although having pistons with two play adjacent dial to the relative surface plastic guide rings, only single hard have part, of the tubular resilient two-way sealing ring, located on Thus, magnet arrange- one pistons. end of the while the surfaces of the patents being ments which the tubular part disclose and devices with face pair adjacent of sealing rings, closely respective the SMC devices sur- have only two-way single sealing rings.4 part. faces of the tubular sealing ring lip lip ring A has a one side of on both sides of the that allows each the ring against that seals fluid flow on that against side to seal fluid flow. contrast, side. By two-way sealing ring has included two amendment that the “claims now original application present also relevance, claims 4 in dependent application” distinguishable claims of are th[e] and 8: over references. these Stoll stated that is “i[t] clear neither of these two according any

4. A linear motor references discloses the use of structure sealing claims 1 to wherein the means preventing by impurities interference piston comprise sealing rings located inside the tube and on the outside provided sliding guide piston is while the arrangement tube rings sealing rings. near the along moved the tube.” according 8. A linear motor considering After preceding response, claims wherein the driven this the ex- claims, aminer allowed the assembly provided with a sleeve made amended re- material, questing encir- that all magentisable references “linear mo- cylindrical assembly specification, tors” be deleted from the cles the hollow magnet arrangement. phrase because this a different “connotes having operational device different charac- added.) (Emphasis teristics.” Action, In the first Office 2. The portion relevant of the Carroll rejected original examiner all twelve patent’s prosecution history is its reexami- claims, patents and cited three as refer- reexamination, nation. Before claim 1 of pertinent.” ences 1-12 “believed Claims patent the Carroll read as follows: ¶ 112, 1, rejected § under 35 were U.S.C. moving 1. A device for articles com- operation because the “exact method of prising unclear. Is device a true motor or [the] addition, material, cylinder In 4-12 a

magnetic clutch?” claims non-ferrous ¶ 112, 2, rejected § were under 35 U.S.C. piston including a a permanent mag- they multiply were “improperly because having pole-piece net a on each axial dependent.” thereof, side body disposed adjacent a and outside claims, response,

In Stoll amended some cylinder, body including a to said said others, and in- including claim canceled substantially permanent magnet which cluding claims 4 and 8. Claim was cylinder, being surrounds the there “plural guide ring amended to recite per- on axial of the pole piece each side ... sealing rings means and first located body, manent in said magnet included axially guide rings” outside said on the cylindrical and to “a piston recite sleeve magnetizable

made of a material.” In the for the admission of controlling means amendments, accompanying remarks pressure cylinder fluid into the and ex- of the claims now for mov- cylinder “[e]ach Stoll stated haust of fluid from the in has re- present ing piston cylinder, this been in the compliance provisions viewed for with the per- the attractive forces between § fur- Accordingly, of Title 35 U.S.C. magnets being manent such that move- claims, particu- ther consideration of these corresponding piston ment of the causes larly respect provisions of Title predeter- body movement of the below respectfully § solicited.” 35 U.S.C. body and such that mined load on the load move- predetermined above said amendment, Stoll submitted this When ment does cause corre- piston not patents he made two of rec- also German body. movement of the sponding 27,37,924 in application, ord No. 19,82,379. Original patent, col. 11. 4-19 No. Stoll had received these Carroll added). in claim did not patents (paragraphing in the first office action This in rings corresponding application. sealing recite the disclosed German Stoll accompanying specification. argued the remarks of resilient materials and cush- requested

Carroll reexamination recitation 18, 1988, piston. ion materials on the ends of the Patent No. citing March German 1,982,379, which was not of record The examiner allowed the amended prosecution history. patent’s Carroll claims, stating that “the art does reexamination, for as- request his Carroll teach or render the claimed combi- obvious patent presented that the serted German plurality mag- nation which includes the question patentability new substantial nets, members, end and cushion members “may because the Office find the Patent relationship.” in the claimed patent, with the German combination Proceedings The District Court C. during which were cited

other references ... patent[,] of the Carroll in the district Festo sued SMC court primary structural disclose several infringement of both the Stoll and Carroll the device Claim 1.” features of defined patents. infringement Festo’s claims of damages and SMC’s counterclaims of The described rodless German invalidity special were to a master referred cylinders having several of the features special for consideration. The master de- patent, the device described Carroll termined that both the Stoll and Carroll including pair sealing rings. patents Corp. were not invalid. Festo granted request Patent Office Carroll’s Kogyo Kinzoku Shoketsu Kabushiki reexamination, finding that the German (D. 88-1814-MA, slip op. No. transport “discloses an article de- 1993) (Re- Spec. Apr. Mass. Master response vice which is movable port). special master also determined hydraulically operated magnetic piston, ap- that the SMC devices at issue in this which is a feature that was not found peal infringe patent, did not the Stoll id. at during prosecution” the Examiner 5, 6, infringe but did claims and 9 of patent. the Carroll Carroll under the doctrine of equivalents, id. at 25. reexamination, During Carroll canceled explicitly claim 1 and added claim which course, In due the district court enter- “a pair sealing rings recites of resilient summary judgment tained motions from opposite situated near axial ends of the parties both infringement on the issues of mounting central member and engaging (Order), validity. Festo I slip op. at the cylinder fluid-tight to effect a seal 1-3. The district court denied all sum- accompanying therewith.” the remarks mary judgment except motions Festo’s amendment, argued Carroll summary judgment infringe- motion of now-amended clearly claims5 “more and ment patent. of the Carroll Id. at 2. In specifically” more define the “features of motions, ruling on the the district court patentee’s invention distinguish literally determined that could SMC not record, over including” the art of the Ger- infringe patent the Stoll because SMC’s patent request man cited in the for reex- magnetizable devices did not have sleeves. amination. Carroll also noted that Id. at The court 6. also determined that structure now described in claim 9 was not genuine there was a issue of material fact disclosed in the art of record. Carroll regarding infringement under the doctrine further particular stated that “the struc- equivalents. Id. at 11. The court ad- piston body ture of the inner and outer prosecution dressed SMC’s assertion that now specifically set forth in new claim 9 is history estoppel application barred the not taught suggested by the German the doctrine of to the Stoll patent,” particularly noting the recitation patent magnetizable because sleeve el- placement plurality of magnets initially ement was not recited for both piston body and outer and the but was added to the claim after the first 5. depend Carroll also amended claims 3 and 5 to from claim 9. court substantially Id. at 9-10. The same function substan

Office Action. way magnet- tially substantially that the reason for the same to obtain concluded “a mystery,” magnetiza amendment was the same result as the claimed izable sleeve related to appear pair sealing rings. it did not to be ble sleeve and Festo because § 112 Corp. Kogyo the examiner’s 35 U.S.C. v. Shoketsu Kinzoku Kabush (D.Mass. rejections, appear July and it did not to distin- iki No. 88-1814-PBS 1994) Form) (“Festo Id. (Special the invention over the art. Verdict guish Form) ”). (Special at The district court therefore de- 10. Verdict es- clined to hold Appeal D. SMC’s pat- toppel finding that the Stoll barred infringed under the doctrine of

ent was appeals the judgment SMC Id. at 11. equivalents. infringement patent, of the Stoll which was pursuant jury’s entered to the verdict that court Turning patent, to the Carroll infringed was under the doc nonin- argument noted that trine of Infringement under that the fringement that SMC made was the doctrine of is a question of ring in single sealing pisttín its Warner-Jenkinson, fact. rings re- equivalent pair sealing We must overturn the patent. in claim 9 of the Id. cited Carroll if jury’s finding on factual issue it is not However, presented at 14. Festo had ex- if supported substantial evidence or it is pert testimony single that SMC’s seal was legal based on erroneous determination. equivalent to the two seals recited Chrysler Corp., Kearns v. 32 F.3d Id. at 14. To rebut this testimo- claims. (Fed. U.S.P.Q.2d 1746, ny, cited a statement had made SMC Stoll Cir.1994). history estoppel Prosecution of the during prosecution Stoll legal question that is to de novo sealing rings that two are neces- the effect LaBounty, review this court. piston’s mag- dirt sary prevent Thus, 1576, U.S.P.Q.2d at 1998. when net. Id. at 14-15. The district court verdict, reviewing jury we will inde during found that the statement made pendently legal question decide the did not bear Stoll prosecution history estoppel “meaning on the and function of the seal- patent. to the Stoll pat- ing rings as described” the Carroll ent. Id. at 14-15. The court therefore appeals SMC also the district granted summary judg- Festo’s motion for judgment infringement of the court’s 5, 6, infringement ment of of claims and 9 patent, which was entered accor Carroll patent of the under the doctrine of Carroll of Festo’s grant dance with the court’s at equivalents. Id. summary judgment motion for that claims issues, 5, doc remaining infringement infringed un- 6 and 9 were under the

The Summary judgment equivalents. der the doctrine of of the Stoll trine of patent, validity plead if the of the Carroll Stoll “shall be rendered forthwith interrogato patents, jury. ings, depositions, were tried to a Festo answers to ries, file, (Judgment), slip jury together at 1. The ren- and admissions on op. affidavits, 14, 1994, if there is no July any, a on conclud- show that dered verdict material fact and ing patents genuine were not invalid and issue as both to a patent moving party that claim 1 of the is entitled finding Stoll Fed. equiva- judgment as a matter of law.” infringed under the doctrine Techs., 56(c); Vivid Inc. v. Amer special lents. Id. at 2-3. The verdict R.Civ.P. Inc., 795, Eng’g, 200 F.3d jury found that ican Science & form indicates (Fed.Cir. U.S.P.Q.2d 1297 proven by preponderance Festo had 53 1999). of a motion non-magnetizable grant review the the evidence that SMC’s We deference, summary judgment without single sealing ring performed sleeve and Warner-Jenkinson, Int’l, Reebok, Ltd., patentability. 14 F.3d lated to Conroy v. (Fed.Cir. 40-41, 117 1040. If the 1575, U.S.P.Q.2d at U.S. so, 1994), all reasonable factual infer drawing patent prosecution holder fails to do non-moving party, of the application ences favor bar the estoppel will Inc., 477 Liberty Lobby, Anderson v. equivalents to that claim the doctrine of 91 L.Ed.2d 202 106 S.Ct. element. (1986); Energy Lab. Co. v. Semiconductor

Samsung Elecs. Warner-Jenkinson, the Su In (Fed.Cir.2000). preme explained purpose placing patent holder the burden of on the infringement alleged 1. When an establishing the reason for amendment: equivalents, to occur under the doctrine of in this manner allocating burden primary legal limitations the doc two “gives to the role of proper deference court, by the trine “are to be determined defining provid claims in an invention and pretrial motion or dispositive either on a ing public notice.” Id. at judgment on a motion for as a matter of 1040. Public notice considerations also and after the law at the close of evidence have fundamental to our decisions been Warner-Jenkinson, jury verdict.” regarding prosecution history legal U.S. at 39 n. 117 S.Ct. 1040. Those estoppel. E.g., Upjohn, Pharmacia & prosecution history estoppel limitations are (“To 1377, U.S.P.Q.2d F.3d “all rule. Id. and the elements” determine what matter has been legal first limitation court relinquished, objective applied, test prosecution history es- should consider is inquiring competitor would rea whether toppel, prosecution history estop- because sonably applicant believe that the had sur pel may completély application bar (ci subject matter.” rendered the relevant given the doctrine of omitted)). quotations tation and order step element. first in a give public due deference to notice con history estoppel analysis is to determine siderations under the Wamer-Jenkinson alleged which claim are to be met elements framework, seeking holder to es Then, equivalents. the court must de tablish the reason for an amendment must termine whether the elements at issue arguments solely public his upon base during prosecution were amended i.e., prosecution, record patent’s (cid:127) not, patent. they If were amendment- patent’s prosecution history. To oth hold based will not bar the is, erwise—that to allow a holder to However, of the doctrine of rely on not in public evidence record to may the court still need to consider wheth establish a reason for an amendment— during er statements made public would undermine the notice function give argument-based rise to estoppel. See record. If the reasons e.g., Upjohn, Pharmacia & 170 F.3d at appear public amendment do not 1377, U.S.P.Q.2d at 1036. patent’s prosecution, record of the the rea If the claim elements at issue sons in most cases will known to amended, were patent the court first must deter holder. therefore hold that We mine whether narrowing give the amendment narrowed amendment will rise to so, the literal If scope prose prosecution history estoppel of the claim. unless the history cution estoppel apply prosecution history patent will unless of the reveals patent pur holder establishes that that the amendment was made for a purpose pose amendment was for a to concerns.6 patentability made unre- unrelated 6. In dissenting opinion, Judge upon rely her Newman which he can to establish that a expresses penalizing narrowing pur- was made concern that we are amendment patent pose patentability by limiting is con- holder the evidence unrelated to what estoppel patentability that, unrelated to prosecution history

If son therefore, application of the doctrine of Wamer- presumption does not bar the should consider Jenkinson equivalents, the court applies and the doctrine of doctrine, legal limitation on the the second equivalents is barred. SMC asserts that see, e.g., Pennwalt rule, the “all elements” voluntary nature of the amendment Inc., Corp. Durand-Wayland, prosecution history irrelevant to the estop- (Fed.Cir.1987) (en 931, U.S.P.Q.2d inquiry because Wamer-Jenkinson pel banc) in (holding that there can be no places the a patent burden on holder to fringement equiva under the doctrine of amendment, establish the for an reason if element of a claim or its lents even one regardless of whether the amendment was equivalent present is not the accused voluntary. required argues SMC that device). If that a the court determines Festo non-magnetizable disclaimed sleeves finding infringement under the doctrine when it amended the claim to recite a entirely “would vitiate a equivalents magnetizable argues sleeve. SMC also element,” particular claim then the court public, including that the competitors like infringement that should rule there is no itself, reasonably would understand from War equivalents. under the doctrine of prosecution history of the that ner-Jenkinson, n. 520 U.S. at 39 Festo had surrendered device with a non-magnetizable sleeve. jury 2. The found that claim of the Wamer-Jen- responds Festo infringed Stoll under the doc- kinson presumption apply does to vol- (Special Festo Ver- equivalents. trine of untary emphasizes amendments. Festo Form). dict The two elements found to be magnetizable sleeve amendment infringed by equivalents “cylin- were the made in response any prior was not art a magnetizable drical sleeve made of mate- rejection and was not needed to overcome rial,” and the located sealing rings “first § rejections the 35 the origi- U.S.C. Id. axially guide rings.” outside ... [the] Accordingly, argues, nal claims. Festo during Both of these elements were added prosecution history appli- does not bar the prosecution patent. Following cation of the doctrine of to this above, methodology outlined we conclude claim element. bars the To determine whether a claim amend- In these claim elements. view of this de- gives prosecution history ment rise to es- termination, “all we do not reach the ele- toppel, we first must determine whether ments” rule. the amendment narrowed the literal presented of the claim. Here we are begin analysis We our with the the situation where the added claim ele- magnetizable sleeve element. ar SMC claim, introduced through ment was a new gues that this claim element is not entitled through instead of an amendment to an any range SMC con Nevertheless, original claim. the addition tends Festo has not demonstrated that the magnetizable amendment was made for rea- sleeve claim element prosecution history provided opportu

tained in the record. that a holder be that, response, we it clear wish to make nity to that an amendment "demonstrate!] amendment, determining the reason for an required during prosecution purpose had a any attorney properly court can consider ar- patentability." Warner-Jenkin unrelated gument regarding the reason for the amend- son, 520 U.S. at 117 S.Ct. 1040. The supported by ment that Court, however, did evidence not discuss the history Permitting patent record. holders to regard. that holders can use in that rely on evidence extrinsic to the Thus, restricting prosecu the evidence to the history public record would undermine the record does not run counter to notice function of the ner-!enkinson, record. In War- Wamer-Jenkinson. required Supreme the inadequate narrowed the assertion to escape can be said to have the War- however, claim the new claim original presumption, the because ner-Jenkinson be- replaced original Specifically, nothing claim. in prosecution history the cause the claim, only original independent the which the that magnet- Stoll indicates the sleeve, magnetizable merely izable sleeve element was did not recite was added independent purposes with an which for replaced clarification unrelated to magnetizable patentability does recite a sleeve. Be- concerns. narrowed the literal cause the amendment remand, argued On Festo also that the claim, we must scope of the determine voluntary nature the amendment that Festo established that it was

whether has magnetizable added the sleeve claim ele- patentabili- made for a unrelated to reason prevents ment the amendment from giving ty- prosecution history rise to estoppel. Our agree We that the reason for SMC Question 2, answer En Banc the adding magnetizable amendment voluntary holds that amendments are sleeve element is not evident from the amendments, treated the same as other prosecution history. Original claim 1 did compels reject аrgument. us to this sleeve, magnetizable although not recite a Festo has thus failed to meet its burden this feature of the invention was recited under Warner-Jenkinson of establishing a original dependent response claim 8. In patentability reason unrelated to ‍​‌​​‌‌‌​‌​‌​​​​‌​​​‌‌​​‌​​​‌​​‌‌‌​‌​​‌‌‌​​‌​‌​‌‌‍for the Action, replaced orig- the first Office Festo amendment that added magnetizable reciting inal claim 1 with a claim a magnet- sleeve element. The amendment therefore izable sleeve and canceled claim Al- gave prosecution history rise to estoppel. though the amendment was submitted in Warner-Jenkinson, See Action, response to the first Office S.Ct. 1040. Because histo- responsive amendment itself was not to ry estoppel complete acts as a bar to the rejections set forth the Office equivalents, doctrine of application of the above, Action. As discussed the Office is barred as to this rejected Action all of the claims under 35 claim element. ¶ § U.S.C. 1 because it clear We turn now the sealing ring

to the examiner whether the claimed de- element. argues SMC clutch; sealing that magnetic vice was true motor or a ring claim addition, element was added to distin rejected Office Action ¶ and, guish prior therefore, art is not § claims 4-12 under 35 U.S.C. any range entitled to being improperly multiply dependent. SMC arguments asserts that accompanying adding magnetizable amendment amendment make clear sleeve the amend element did not address either of ment rejections. Moreover, distinguish was made to these there is no art. competitor SMC contends that a prosecution history statement such reasonably as itself explains why would conclude from this element was included prosecution history that Festo surren independent claim. dered the originally difference between the Supplemental its Brief On Remand sealing claimed sealing means and the Court, Supreme from the argued Festo rings recited in the By amended claims. that the amendment was clarify made to token, the same argues, SMC Festo dis Specifically, claim. Festo asserted “ ” claimed the original difference between the cylindrical ‘hollow assembly’ and amended claims. original recited in claim 1 was “rewritten clearly cylindrical more as ‘a sleeve made principal argument Festo’s there of a magnetizable material.’” Appellee’s is no substantial difference origi- between Supplemental Brief On Remand from the nal claim 1 and the amended claim with United Court, States at 7. respect sealing ring This Spe- element. that cifically, argues original requirements Festo satisfies the of section sealing ring element in an satisfy claim recited amendment made to the statute means-plus-function language, whereas the is an amendment made for a reason relat de- patentability. supra amended claim recites the structure ed to See Answer to specification performing Question En Banc scribed 1. The amendment also (“the corresponding appears the recited function to have distinguish been made to structure”)- also art. argues prior Festo Submitted with the amend give pros- claim did not rise to ment was a amendment statement to the effect 27,37,924 history estoppel ecution because it was German Patent No. and German 19,82,379 respond § to the 35 obviously made U.S.C. Patent No. clearly “are rejection, prior distinguishable not to avoid the art. Festo subject over the matter of accompany- present contends that the statements the claims now applica th[e] tion,” i.e., ing amendment do not evidence a clear the amended claims. Also sub and unmistakable surrender of mitted with the amendment anwas asser and, therefore, give matter did not rise to tion that “[i]t clear that neither of these estoppel. two references discloses the use of struc preventing ture by impu interference sealing ring element was add rities located inside the tube and' on the original indepen ed to claim 1 when the of the arrangement outside tube while the replaced dent claim was with the inde along is moved In tube.” view of these pendent claim that issued as claim 1. This statements, we conclude that the amend scope amendment narrowed the literal adding ment the sealing ring element was claim it because inde substituted distinguish made to patents the German pendent sealing ring claim that recited and, therefore, was made for a reason independent element for an claim that did related patentability. See Warner-Jen not recite such an element. Even if the kinson, 520 U.S. at sealing ring amendment that added the (noting that amendments made to avoid merely replaced means-plus- element give art have been held to rise to language with a recitation function of the Thus, prosecution history estoppel). Festo structure, corresponding the amendment cannot establish that the amendment was narrowing had the effect of scope for a patentabili made reason unrelated to A the claim. claim element recited ty. gave The amendment therefore rise to means-plus-function language literally en and, prosecution history estoppel in accor compasses corresponding structure En Ques dance with our Answer to Banc equivalents. Corp. and its Laitram range no is available Inc., Rexnord sealing ring for the element. (Fed.Cir.1991). jury’s finding infringement was contrast, a claim element that recites the on an based literally corresponding structure does not magnetizable to the sleeve encompass equivalents of structure. elements; sealing ring accordingly, Thus, a claim that replaces Id. amendment judgment we must reverse the that claim 1 means-plus-function language lan infringed of the Stoll was under the guage reciting corresponding structure doctrine the literal narrows claim. We conclude that Festo has not estab- 3. The district court granted lished that the amendment that summary judgment added the Festo’s motion for ring infringement equiva element made for sealing a rea- under the doctrine of patentability. respect independent son unrelated to Festo ar- lents with claim 9 gues dependent the amendment was made to and 6 of the claims 5 Car (Order), respond rejection. § patent. slip op. U.S.C. roll Festo I Because a claim will not issue unless it The element all three claims found to be could not have states that the amendment pair is “a of resil- by equivalents infringed opposite required distinguish near the German sealing rings situated been ient reexamination, mounting mem- the central the patent prompted axial ends of that (a rings”).7 Id. at sealing pis- of a “pair ber” discloses because the German during claim 9 added to was argues This element sealing rings. ton with Festo Fol- patent. the Carroll of reexamination not made for the amendment was because above, we methodology outlined lowing the patentability, purpose related to history estoppel prosecution conclude that prosecution his- amendment did not create of the doctrine application bars tory estoppel. of the claims of to this element amend- determine whether this claim To In view of this deter- patent. the Carroll history gave prosecution rise to es- ment mination, the “all ele- we do not reach whether toppel, we first must determine rule. ments” scope the literal the amendment narrowed purpose Festo’s argues that SMC claim. with the elements of the As is not clear.8 SMC for this amendment above, claim ele- patent discussed Stoll can specifically Festo states that because ment issue the Carroll was at 1, which did not recite original celed claim, instead of through introduced new piston, ring at each end of sealing through pending the amendment of ’ 9, does recite a claim which and added reexamination, during Specifically, claim. piston, end of the sealing ring each 1, independent claim which did not recite a conclusion is reasonable by inde- pair sealing rings, replaced was purpose for a relat was made amendment 9, pair claim which does recite a pendent SMC further asserts patentability. ed to rings. amendment nar- sealing This 9 is a combination that because claim scope rowed the literal of the claims claim, hinges on the novel patentability its patent.9 Accordingly, we must Carroll combination, including the ty of recited amendment. consider the reasons for the sealing rings. SMC also pair

recited purpose if the for the amend argues that above, As discussed under Wamer-Jen- unclear, the Warner-Jenkinson ment kinson, the burden of estab Festo bears applies, presumption lishing that the amendment was made for equivalents is barred. doctrine of patentability. a reason unrelated to War ner-Jenkinson, 520 U.S. by arguing that responds Festo 40 — 1040. It has failed to do so. Festo adding pair sealing amendment specific admits that there is mention “[n]o rings required, element was not and thus sealing rings” prosecution states that because voluntary. was Festo history Responsive record. En Banc Brief voluntary, it cannot amendment Plaintiff-Appellee Corp., Festo at 49. give rise to Moreover, in view of our answer to En under Festo also Warner-Jenkinson. expressly recited in claim 133 L.Ed.2d 571 7. This element is (1996). and is included in claims 5 Our consideration of his incorporate tory estoppel particularly appropriate, depend claim 9 and which here is Wamer-Jenkinson, claim, case which the all of the limitations of see 35 because 1.75(c) ¶ (1994); Supreme GVR, § § C.F.R. Court asked us to consider in this U.S.C. specifically prose addressed the role of history estoppel on the cution limitation argue prosecution history 8. SMC es- did not See Warner-Jenkin son, toppel respect to the Carroll be- 520 U.S. at 117 S.Ct. 1040. upon fore the district court. But a GVR from Court, may dependent 6 are appeals a court of 9.Because claims 5 and claims, arguments that narrows the “consider relevant amendment decisions depend they previously promote were it” of the claim from which before States, supra fairness. 6. See note 7. also narrows claims 5 and Stutson United voluntary nature Question Banc CONCLUSION inquiry. irrelevant to the the amendment is The claim elements of the Stoll and Car- patents roll that were found to be infring- history of the Carroll prosecution by equivalents perti- ed were added to the that the amendment that patent reveals during prosecution nent claims of Stoll pair sealing rings of claim ele- added patent during and of reexamination by at ment motivated least one reason was patent Carroll through amendments that avoid patentability: related to desire to narrowed the of the claims. As accompany- art. In the remarks prior above, explained Festo has not established ing the amendment that introduced claim explanations for these amendments unre- pair sealing rings, which recites the of patentability. lated to The amendments stated that the amendment defined Carroll gave prosecution therefore rise to history patentee’s the “features of the invention circumstances, estoppel. these Under record, art distinguish over the amended elements are entitled to no patent including” the German cited Thus, range equivalents. they cannot Thus, request although for reexamination. be infringed equivalents. The court’s patent piston disclosed a German judgment infringement doc- under the did sealing rings, argue Carroll that the trine of of both the Stoll and features in the combination of recited Carroll therefore claims, pair sealing which includes the REVERSED. rings, distinguished the claims over the Moreover, patent. German when the ex- COSTS claims, aminer allowed reexamined he party Each shall bear its own costs. stated that “the art does not teach or render obvious the claimed combination PLAGER, Judge, concurring. Circuit plurality magnets, which includes the join I opinion concur and members, end and cushion members judgment It of the court. is a second-best added.) relationship.” (Emphasis claimed unsatisfactory solution to an situation. Although the examiner did not specifically law, our preexisting Under count for pair sealing rings reference the in his infringement equiva under the doctrine of allowance, statement of reasons for his part lents became routine of a emphasizes statement that it is the claimed infringement game suit. The was to con combination of elements that was found to fact, jury, vince the trier of typically patentable. In view of this if in product1 even an accused does not history, Festo cannot establish that written, fringe the the claimed claims pair sealing amendment that added the product invention and the accused have rings element made for a reason unre- differences,” “insubstantial wonder Indeed, patentability. the prose- lated fully phrase, lending itself indeterminate cution indicates that the amend- making under the doc decision eyery ment was made for a reason related to choice, if simply trine an individualistic patentability. In accordance with our an- flipa of the coin. For the rationale behind Question swer to En Banc rubric, the “insubstantial differences” see history estoppel bars of the Hilton Davis Chemical Co. Warner pair to the of seal- 1512, 1516-18, 35 -Jenkinson 62 F.3d ing rings Accordingly, element. we must (Fed.Cir.1995), U.S.P.Q.2d 1644-45 judgment remanded, that claims reverse rev’d and infringed U.S.P.Q.2d 9 of the Carroll were un- 137 L.Ed.2d der the doctrine of device, “product” any process, term etc. use broad to include so; says “in until a of this court the rule phrase panel make the attempt

In an indeterminate, analysis gives guidance, less little real substantial differences” old to resort predictability. have continued equally we little formulation, indicat “function-way-result” attempts to today’s rulings the court cases—whatever ing appropriate indeterminacy of the limit some of the could be answer might mean—the rules, bright-line with a set of doctrine See, e.g., through those lenses. found uncertainty for a de- trading off areas Inc., Concepts, Kinetic Co. v. Hill-Rom rigidity. Unfortunately, this at- gree of injecting certainty into the doc- tempt at Foods, (Fed.Cir.2000); Inc. v. Kraft for unintended potential trine contains the 1362, 1371, Trading F.3d 53 Int’l 203 may consequences, consequences that do (Fed.Cir.2000); U.S.P.Q.2d 1820-21 problem. nothing but exacerbate the Corp. v. Chamberlain Overhead Door Inc., 1261, 1270, response What will be the 52 194 F.3d Group, (Fed.Cir.1999); practice rules? Past has U.S.P.Q.2d Au bar to the new 1327 Medical, Indus., Gaymar broadly applica- Inc. v. claim in the initial gustine been to Inc., U.S.P.Q.2d 50 patent, negotiate for a and then tion (Fed.Cir.1999); Vehicular Tech. States Patent and Trademark United Int’l, Inc., 141 F.3d Corp. v. Titan Wheel through rejections Office one or more until 1084, 1089-90, U.S.P.Q.2d arriving mutually acceptable at a set of (Fed.Cir.1998); Ken Equip. Dawn Co. v. engage- claims. the new rules of Under Inc., 1015-16, F.3d tucky Farms ment, process prosecu- will create full (Fed.Cir.1998). U.S.P.Q.2d limi- history estoppel regarding every and “result” are in Though “function” for patentability tation that is amended reasonably straightforward, many cases broadly a term purposes, now defined. product compared “way” of an accused may past Patent counsels decide that proved claimed invention has to that of the practice gives up too much under the new in precise to be no more criterion its rules, may nar- claiming instead start “insubstantial differ application than rowly hope avoiding rejections with the ences,” supposed it to be a for which was consequent in- amendments. Literal See, e.g., surrogate. useful Overhead fringement prove will become harder Door, 1270, U.S.P.Q.2d at 194 F.3d at because claims will be drafted more nar- rowly greater specificity. and with That the trier of fact yet, Worse whether was may good, itself be to the since much of judge jury, infringe the decision about current litigation involves equivalents ment the doctrine of under resulting construction issues from the does not with the trial. Given the end vague, incomprehensi- sometimes almost test, indeterminate nature of the it is not ble, in manner which claims have been losing party difficult for the to make a drafted. plausible argument appeal there however, An consequence, unintended or that “no reasonable was “clear error” may be that will patent litigation lean ever thought jury thing,” could have such a heavily equiva- more on the doctrine may the case be. Given the indeterminate lents, in in especially those cases which the test, this court shown nature of the has patent application, containing narrowly little reluctance to review these decisions. claims, See, Hill-Rom, approved drawn without e.g., 209 F.3d at 1442; amendment the area that affects the U.S.P.Q.2d Equip., Dawn may product. patentee accused have F.3d at 1113-15. The net little choice but to insist on enforcement effect has been that all too often if way equivalents, there is no under the doctrine of particu to know whether product lar all. infringes under the doctrine is to be enforced at Since doctrine, change equitable the basic should be treated as an today’s does not decision analysis infringement important consequences claims would flow. Trial rule of courts, the out- equivalents, sitting equity, the doctrine of as courts of under would be to be responsible in those cases will continue for deciding come whether the doc- pre-existing “insubstan- tested under the applied, trine of should be surrogate and its “func- tial differences” practice regarding unlike the the doctrine tion-way-result,” game-playing with all the inequitable appeal conduct. On to this phrases provide. those indeterminate court, would review trial we court’s de- termination under the deferential standard then, supposed In time benefits of abuse discretion. improvements contained the doctrinal today’s may prove illusory. decision apply The test trial courts would why I consider it a second-best

That is objective crafted to would be blend both be to A better solution would solution. subjective factors. The differences declare the claimed ac- between the invention and the —a have judge-made place rule the first necessarily cused would product remain —to firmly equity, and to acknowl its roots relevance; addition, eq- and in traditional that when and in what circumstances edge would on mat- uitable considerations focus law, a applies question equitable it is a ters such as the conduct of the accused judges responsibil for which bear question product’s specifically, sponsors, the consid- roots in a ity. We have admitted to these pronounced erations cases. Texas Instruments number of See opinion Court’s seminal in Tank & Graver USITC, 1165, 1173, Inc. v. 988 F.2d 26 Manufacturing Co. v. Linde Air Products (Fed.Cir.1993) (“the 1018, U.S.P.Q.2d 1024 Co., 605, 607-08, 854, 70 94 339 U.S. equivalents ‘judicially been has (1950): 1097, 328, U.S.P.Q. L.Ed. 85 330 ’ ” equity (quoting to do Loctite devised [Cjourts recognized have also that to Ltd., Ultraseal, 861, 870, Corp. v. 781 F.2d imitation of a permit patented invention (em (Fed.Cir.1985)) 90, U.S.P.Q. 228 96 every detail copy which does not literal added)); Indus., Inc. v. phasis Valmont protection convert the would be to Co., 1039, 1,n. Mfg. Reinke 983 F.2d 1043 grant into a and useless hollow (Fed.Cir. 1451, U.S.P.Q.2d 1454 n. 1 25 thing. Such limitation would leave 1993) (“the designed eq doctrine ‘is to do encourage for—indeed un- room ” —the ’ Corp. v. uity (quoting Perkin-Elmer unimportant scrupulous copyist to make Westinghouse Corp., Elec. 822 F.2d changes and and substitu- insubstantial (Fed.Cir. U.S.P.Q.2d 1324 which, adding though tions in the 1987)) added)); (emphasis Greiner Charles take nothing, enough would be Inc., F.2d Mfg., & Co. v. Mari-Med claim, and copied matter outside the (Fed. 1031, 1036, U.S.P.Q.2d hence outside the reach law.... Cir.1992) (“careful the doc confinement of [of ... The essence of the doctrine equivalents proper equitable trine of to its equivalents] may practice is that one clarity in promotes certainty role ... Originating patent. a fraud on a almost determining scope patent rights” century ago in the case of Winans v. added)); Pi (emphasis London Carson Denmead, 717, it 15 How. 14 L.Ed. Co., rie & Scott consistently by this applied has been (“this (Fed.Cir.1991) U.S.P.Q.2d courts, and Court and the lower federal doctrine evolved from a balanc eqidtable ready available for today continues competing policies” (emphasis add ing of circum- proper utilization when ed)). application arise. stances for its openly acknowledge this court to Were “unscrupu- can It true that “fraud” and that the doctrine of is precision, are not terms of equitable roots and lous” conduct legitimated its objectivity. has now shown judges Experience terms with which are yet they are than they point hope to that belief to have been more importantly, familiar. More doctrine; reality. focusing In on the mechanistic underlying reason for the differences, said, of insubstantial the court the essence of the doctrine idea the Court equity grapple problem fairness and failed to with the basic fraud. Notions of Thus, uncertainty have law. five short over the centuries are concerns which later, beyond again years grappling the fixed we are permitted courts reach “proper problem. circum- This is a self-inflicted legal rights stances,” phrase. What wound. to use the Court’s regard pat- are in those circumstances easy It would be now to blame the Su- time could deter- rights ent this court over in, preme since the mess we are mine, body develop a refined time Court, response to our Hilton Davis na- emphasizes exceptional of law that decision, opined has on the matter. See time, ture of relief under the doctrine. Warner-Jenkinson Co. v. Hilton Davis of known there would be set factors Chem. 117 S.Ct. giving a applied predictably, could be thus L.Ed.2d degree certainty of decisional to the doc- However, I do not believe that the Su- trine, retaining flexibility in all the while preme way Court wishes to stand in the with new situations— process deal one, a sensible solution. For the Court equitable adjudication. the hallmark of expressly declined to consider whether the contrast,

By the notion of “insubstantial of the doctrine of particular judge jury. differences” between a claim a task for the Warner- Jenkinson, viewed particular product, and a as the 1040, 146, U.S.P.Q.2d

governing principle, anything can never be 137 L.Ed.2d 41 at judgment, dependent other than an ad hoc That infringement under the doc- moment; eye on the beholder in the individual trine is a fact is issue of no considering Though equity case. we talk about courts deal with facts all the time. addition, copying, factors as the inter- In a Supreme such role Court that did not elements, on, changeability making aspect and so balk at the most critical that, reality infringement is as our cases since Hilton law—claim construction'—a demonstrate, alone, Davis equiva- judges decision on matter for see Markman v. call, Instruments, Inc., essentially subjective 370, lents remains 517 U.S. Westview 1384, 577, repetition of verbal formulae but 116 S.Ct. 134 L.Ed.2d 38 (1996), transferability U.S.P.Q.2d without from case to case of may, 1461 when practical guidance. This to me the an- it pressed, appropriate find to acknowl- equitable tithesis of the rule of law. edge nature of the doctrine equivalents why judges and the reasons I at previously length have written on comparative equitable have a in advantage problem my suggested ap- this adjudication. proach mаnagement, to its see Hilton Davis, 1536, U.S.P.Q.2d Supreme 62 F.3d at 35 at in Court its Wamer-Jen- J., (Plager, joined 1661 dissenting, opinion opine kinson did plays “intent Archer, C.J., Lourie, JJ.), Rich and no role doctrine and will repeat Warner-Jenkinson, not all that was there. equivalents.” said 520 36, 17, 1040, attempt this court’s earlier to address 137 doctrine, 146, U.S.P.Q.2d difficulties our L.Ed.2d 41 at 1874. That Davis, 1512, see Hilton suggests 62 F.3d 35 that at some of least the consid U.S.P.Q.2d 1641,passim, majori- equitable the court erations involved in traditional ty elevated the notion of analysis insubstantial dif- would not be How appropriate. criterion, ever, ferences to controlling regard on the statement in Court’s expressed it preceded by belief that had some abstract was a reference to Graver LOURIE, that, Judge, concurring. Circuit Tank fact while Graver Tank and the of intent- for the inclusion leaves room fully join majority opinion. I How- doctrine, it did not elements based ever, separately respond I write to com- this, From the Court them. require supporters ments and concerns of to ex- view” was opined that the “better rule. flexible bar Today, considerations. clude intent-based that, It has been stated a dissenter that well conclude since might the Court majority has of the members of the have “objective” approach most the so-called unworkable, opinions supporting authored a flexible equita- a return to the proven My obligation I am one of them. would be the “better bar. analysis approach ble if and it is correct that Particularly precedent, would this be so this to follow view.” precedent for a way, in its Wamer- our court has had flexible court led the since bar, necessarily pre albeit consistent decision the Jenkinson I what echoing what cedent. therefore followed seemed doing little more than strongest precedent intent in our line of on the to be we had said See, Sextant, e.g., that time. 172 F.3d opinion. Hilton Davis 1865; U.S.P.Q.2d Upjohn Pharmacia & responsible primarily are the court We Pharms., Inc., Mylan 170 F.3d Co. law, and the Su- the state of (Fed.Cir.1999); U.S.P.Q.2d 1033 Bai v. duty it our pronounced has preme Court Inc., Wings, L L 160 F.3d & improvements implement procedural “best (Fed.Cir.1998); U.S.P.Q.2d 1674 Laitram consistency, and re- certainty, to promote Indus., Inc., Corp. v. Morehouse law.” War- viewability to this area of the (Fed.Cir.1998); U.S.P.Q.2d ner-Jenkinson, n. 520 U.S. at 39 Airlines, Inc., 107 F.3d Lockwood v. Am. U.S.P.Q.2d L.Ed.2d (Fed.Cir.1997). to “think It is time for us at 1876 n. 8. However, experience, recog light box,” and restore the doctrine outside the requirement for nizing Congressional original equitable its ¶ 2, claims, § precision 35 U.S.C. ju- providing thus purpose, function and op persuaded that when we have the am making that lends itself to process dicial from an un portunity depart en banc predict- determinate and the doctrine both by holding patent applicants workable rule able. PTO, actions in the we should do to their existing wedded to the Those who are today in Adoption of a firmer rale is so. all can no doubt find sorts regimen patent system. the best interest of the approach. objections proposed to this violate the Su holding does not I advocate is Our say approach cannot that the in preme guidance Court’s Warner-Jen equivalents all that ails the panacea for Co., 520 v. Hilton Davis Chern. say that we have kinson Co. practice. I can what and, well, in 117 S.Ct. 137 L.Ed.2d very as we did U.S. does not work Markman, else, decided something key The issue try it is time to relating to in Wamer-Jenkinson jurispru- that Court something has substantial history estoppel was whether out some legitimacy dential and holds a claim amendment are time the reasons for promise improvement. for Until such determining prosecu in whether is of a mind to seek and relevant as this court applied. be history estoppel tion should long-term equiva- design solution held however, 1040. The Court I have little choice Id. S.Ct. problem, lents an amendment is rele to that the reason for join but to in even this limited effort vant, otherwise, amendments made for substantial I fear re- cabin what is to an mains, relating patentability lead predictable re- a doctrine short reasons referred to the sults, While the Court estoppel. achievement of and short on the reason prior principal art as it existence. avoidance equity to which owes its relating patentabili- for an amendment It has been said that there is no hard application prose- limit the ty, it did not evidence showing the so-called “flexi- history estoppel to claims that were cution impairs predictability. ble” bar While it is for art reasons. Id. at 30- prior amended empirical may true that data not be avail- Hence, court, 1040. this S.Ct. able, powerful may evidence garnered decision, present scope its has refined the court, experience from the of this related to patenta- of “a substantial reason monthly appeals infringe- reviews in which any relating include reason to a bility” to ment is asserted under the doctrine for statutory requirement patentability. though prod- even the accused words, if was not allow- other clearly scope uct is not within the literal statutory reasons without an able Many ap- the asserted claims. of these amendment, amendment pre- then the was peals involve histories which for a sumptively relating made reason amendments for patentability reasons have patentability. may an amendment Such Yet, equivalence argued been made. is either to art or to relate various hope panel that one might equiva- find §§ requirements under 35 U.S.C. 101 and lence where another would not. That surely persuasive evidence that the cur- Court has not addressed rent flexible bar is not working. Our court what remains when a created with opportunity was and man- clearly patent- claim has amended been problems date to observe such in the law ability reasons. The closest the Court upon and to act possible sоlution. See came to doing so was Wamer-Jenkin- Warner-Jenkinson, 8, 40, at 39 n. U.S. son, presumption it where created the U.S.P.Q.2d at 1875 n. for a amendment made reason (“We expect that the Federal Circuit relating patentability when it is unclear will refine the formulation the test for why that was made. amendment equivalence in orderly course of case- then stated: “In those circum determinations, by-case and we leave such stances, prosecution history estoppel would refinement to that court’s sound judgment bar of the doctrine in this special area of its expertise.”). equivalents as element.” Warner- why That is we given have been exclusive Jenkinson, 1040; jurisdiction over appeals. Avionique, see S.A. v. Analog Sextant De 1295(a). § vices, Inc., U.S.C. (Fed.Cir.1999) 1874-75 It suggested has been there are (explaining language only that this applies expectations settled in the bar and innova-

when the reason for an amendment un community regarding the present known). It did not otherwise render rule. The expectation settled cur- holding concerning scope the of equiva rently existing is the expectation that clev- lents that a remains when claim has clear attorneys er can argue infringement out- ly patentability been amended reasons. side the all way the claims Thus, en banc court this is free to do so through appeals. this court of Such a fact, In today. today merely we extend expectation settled should become unset- the Supreme complete against Court’s bar Surely, tled. prosecuting when a patent, application equiva patent practitioners expec- have no settled lents, applies which when it is why unclear being tations of able to assert the doctrine an patentee amendment was made and the equivalents. Any patent attorney who fails to rebut the presumption that an fails to claim all that his inventor has amendment was made for relating reasons invented, patentable, and that is patentability, to in which is ill-ad- pat- cases clearly entee amended a claim for vised to settle for a patenta- narrower claim than bility reasons. justified he considers on the assumption C.J., However, the quish dissenting). Su- equiva- rely on the doctrine he can wisdom, Court, preme in its believed reliance coverage. Such broader lents for practice should be overturned that the decades of risky prospect given highly is a bring judicial our standard of claims. 35 order precise requires statute patent PTQ, ¶2. of fact made appli- findings review of patent § aWhen U.S.C. ap- of review a into line with the standard rejection, expects faced with a cant is (or she) plied agency his to other decisions. Id. at master of rejection, he Similarly, majority ap- 119 S.Ct. ground his He can stand claims. important policy If latter this court believes claims. amend the peal, or conduct, relating achieving the chosen, considerations such of action is course world, by Congress justi- certainty contemplated bind should known to which is departing from an older unworkable applicant fact that the fies applicant. rejec- rule. unjustified appeal may have expense,

tion, incurring loss of time Finally, fears that one of the dissenters refrain from that we should does not mean copiers would-be today’s ruling provides meaning to the of claims adding clarity pass appropriate a free the essence with actions to them holding patent applicants yet infringe- escape of an invention and and Trademark Office in the Patent theoretically true. In the ment. That is (“PTO”). future, closely ap- more competitor may a patent limits of the claims in proach does not make Additionally, the PTO narrowing amendment has been range assumptions” relating to “basic liability. fear of Occasional Warner- made without allowed. See equivalents to be However, injustices may occur. believe Jenkinson, (“[Ilf will be injustices occasional has such U.S.P.Q.2d at 1872 PTO by competitors who language greatly in claim outnumbered changes requesting been prod- to introduce innovative ... will be able to limit without the intent scope of claims without upset ucts outside the extremely reluctant to we should expen- unjustified, protracted, and fear of the PTO without assumptions of the basic world, so.”). today’s spec- litigation. sive doing reason for substantial equivalence claims unpredictable ter of light of the disclo- examines claims PTO decisions, while many against haunts too business application and sure (1994) overwhelming majority equivalence § art. See 35 U.S.C. more than (“Examination ultimately fail. It Manual of claims application”); hold justified to lessen this fear and §§ Examining Procedure Patent of their (7th 2000) (“The consequences pre- applicants to main conditions ed. rule we decisions. The public prosecution to an grant cedent innova- today encourage announce should [§§ ] in 35 are set forth U.S.C. applicant tion, uncertainty, and diminish lessen examiner [T]he 102 and 103.... while unnecessary litigation, ap- volume of [a new] contents of should review the com- protection with providing patentees if the to determine plication and allowed disclosed mensurate [§ ] of 35 U.S.C. requirements meets the 111(a) scope of their inventions. require- basic (setting forth the [ ].”). It patent application) for a ments hy- biotechnology example As for the any expecta- patents with does not issue dissenters, I be- by of the pothesized one equivalents. regarding tions largely theoretical. concern is lieve the only in a field are inventors compels us to The first decisis It is said that stare they can describe claim what rule. I entitled to with the old stay the course enable, that com- I am confident and Zurko. See and regarding thought the same readily can craft Zurko, attorneys petent patent 527 U.S. Dickinson subject matter so (Relin- claims to cover their 144 L.Ed.2d 119 S.Ct. Moreover, can be avoided. jority’s holding effectively strips pat- most inventors will be able to subsequent better entees of rights their infringe- assert develop improved products find and with- ment under the of equivalents, doctrine out Predictability fear of lawsuits. will be despite Supreme Court’s unanimous enhanced. adherence to the doctrine in Wamer-Jen- kinson. The majority’s new consti- rule that, fact even our past under a rejection tutes policy by advanced bar, rule flexible no court has rendered the Supreme Court Wamer-Jenkinson holding infringement only decision under that the all-elements rule and equivalents by the doctrine of an accused history estoppel are sufficient to balance gene protein. To the extent that a competing needs of granting meaning- competitor has been deterred from devel- protection ful patentees and notifying oping compound new for fear that it will public of the scope effective of a paten- be an infringer held be an equiva- under tee’s claims. theory, lence I believe that our new rule provide

will a clear gain net for innovation public. They and the will benefit from the Majority’s I. The Upsets Rule the Bal- greater certainty compounds that new ance Supreme Struck Court within scope granted claims can be Through Wamer-Jenkinson Be- without developed protracted fear of litiga- Competing tween the Needs for tion. Meaningful Patent Protection and reasons, For these and Adequate for aptly others Public Notice. expressed by majority opinion, join I Before discussing particular Supreme the majority opinion. cases, Court I believe it important summarize doctrinal framework that

MICHEL, Circuit Judge, coneurring-in- Supreme Court has consistently em- part, dissenting-in-part, with whom Circuit ployed century for over a to balance a Judge joins. RADER patentee’s need meaningful protection join I majority opinion respect with against copying and the public’s need for to the disposition Questions 1, 2, 4, notice as to the scope effective of paten- However, I must dissent from the ma- tee’s claims. Supreme Court has con- jority’s response Question 3 because I sistently stated, and has done so as recent- believe it Supreme contradicts pre- Court ly Wamer-Jenkinson, as that application cedent and policy. rule, supplemented all-elements Co., In Warner-Jenkinson Inc. v. Hil by prosecution history estoppel, sufficient- ton Davis Chemical ly balances the competing needs of mean- (1997), Supreme ingful patent protection adequate pub- Court encouraged our court to “refine the lic notice. Today’s majority upsets this formulation the test equivalence.” balance, holding that public notice convinced, am however, that majority’s only patents function of can fulfilled new “complete rule,” bar far from being limiting the scope patents effective merely refinement, such a contravenes amended limitations to the literal wording Supreme consistent authority. Not of such limitations. majority’s does the new directly rule contradict one Court holding, but The limitations of patent’s pro- claims it undermines the legal standard that the vide an initial measure of the effective Supreme Court has consistently articulat patent, both literally un- ed in seven other cases for determining the der the The all- scope of Moreover, such estoppel. be provides elements rule every limita- cause patents most contain claims that material, tion of a claim is and that an were amended during prosecution, the ma- accused lacking device a corresponding el- (1900) (“If 26, it be a claim to thereof, 45 L.Ed. 95 every ement, equivalent or an combination, speci- to claim, a and be restricted even infringe the cannot limitation elements, regarded all must be as fied equivalents. See doctrine under the land, Inc., material, question leaving open the Durand-Way Corp. v. Pennwalt 1737, by an part supplied an omitted is 937, U.S.P.Q.2d 1741 whether 931, 833 F.2d (ci- banc) instrumentality.”) (en or (Fed.Cir.1987) equivalent a device (holding that added)); omitted, Shepard emphasis limi tation satisfy claim [a that does not “device 593, 598, 493, Carrigan, 116 U.S. S.Ct. not func v. does equivalently at least tation] (1886) (same); 495, Fay v. 29 L.Ed. 723 way substantially the same as tion Cordesman, 408, 421, at 109 U.S. 3 S.Ct. invention,” in and thus cannot claimed (same). (1883) the all-ele- 244-45 Under equivalents). under the doctrine fringe rule, provide themselves for ments the claims recognized has Supreme Court public to the as to the considerable notice public century a more than (i.e., paten- a make, scope effective use, sell devices that or entitled infringement by a device tee cannot assert corresponding more elements lack one or claims, of one or more equivalent or lacks an patent’s limitations of a issued), claim, while See, limitations of the as e.g., Shepard v. equivalents. their scope patentee for the preserving Carrigan, (“Where (1886) equiva- under the doctrine appli protection 29 L.Ed. prevent copying. combina lents patent to cover new cant for a rejection of his by the compelled narrows his patent applicant When a narrow patent-office limi- by adding a during prosecution claims of a new by the introduction his claim rejection, art traverse a tation to element, the issue of the he cannot after between of the communications substance by dropping his patent broaden may applicant and the examiner fur- include compelled which he element as to additional limits notify public ther patent.”). his in order to secure scope of the on the enforceable such as the Wamer-Jenkinson, Depending on factors claims. rejection, examiner’s breadth of the that under the all-ele reiterated Court applicant in which the estop- manner history rule and ments objec- to overcome amends his claims adequate notice as public receives pel, the tion, technology at nature of the and the patent claims. scope of to the enforceable issue, might con- Warner-Jenkinson, competitor a reasonable 520 U.S. See amend- (“So remarks and applicant’s the doctrine strue long as 117 S.Ct. at 1049 of claim evince a surrender beyond ments to not encroach does rule would than the all-elements just greater rule] the all-elements [of the limits Co. v. Unit- Hughes require. See described, related limits to be beyond Aircraft States, estop- ed history [prosecution discussed infra (Fed.Cir.1983) (“Depend- U.S.P.Q. will that the doctrine are confident pel], we of an purpose ing on the nature pat central functions not vitiate the (citation omitted). amendment, limiting effect themselves.”) may it have ent claims great to ranging from spectrum Moreover, within the Wamer-Jenkinson zero.”). doctrine describe this that, We limiting appli its small although reaffirmed precisely estoppel,” “prosecution as cation, rule still accommo all-elements competi- hypothetical reasonable in because to assert right patentees dates the appli- rely on the be able to tor should See id. fringement of some and amendments representations cant’s (quoting Hubhell at 1050 S.Ct. The doc- subject matter.1 States, a surrender United history. See alleged infringer to statements require the We do not personal reliance on actual demonstrate prosecution history sup estoppel trine of of that limitation are foreclosed the plements by provid the all-elements rule mere fact of amendment. majority’s The ing notifying public rules for set of the might aptly rule more be called “bar whether, extent, scope and to what the amendment” “estoppel,” rather than than protection is even narrower what the always by. has been measured what a rea- all-elements rule would allow. War See competitor sonable would understand the enkinson, ner-J U.S. applicant to have surrendered order to (“[P]rosecution history procure I patent. looking his believe that places limits reasonable on the doctrine of solely amendment, to the fact of rather equivalents, [than and further the all-ele than the substance of communications be- ments insulates rule] the doctrine from applicant examiner, tween the and the is Act.”). any feared conflict with the Patent contrary to the principles that the Su- (and court) preme contrast to the prosecu- always doctrine of our has history estoppel tion we applied applied have until determining scope estop- the today, majority’s complete new pel. bar supplement rule does not the all-elements rule, majority’s Under the in contrast to way clarify rule as a to further Supreme application Court’s of the all- equivalents available patentee. to the prosecution history elements rule and es- attempt Rather than to “refine” our case toppel, patentee range retains no law as to how the added claim limitations equivalents for a claim limitation that has should in light be enforced of the sub- patentability been amended for reasons. stance of the communications between ex- approach upsets This Court’s applicant, aminer and majority’s new balance competing between the needs of simply rule forecloses all of the public sufficient meaningful pat- notice and doctrine of equivalents any for amended protection. minimum, ent very At the I claim limitation. This approach by-passes majority’s believe the rule unfairly altogether. all-elements rule Maj. See harmful, it' deprives patentees because Op. (“Following at 590 methodology any recourse to the equivalents doctrine of above, outlined we prosecu- conclude that limitation, added or narrowed no estoppel bars the application matter how minor the amendment. More equivalents doctrine of to this ele- however, importantly, pre- believe that ment of the claims of the Carroll patent. cluding patentee’s right protec- to seek determination, In view of this we do not tion under the rule.”); reach ‘all elements’ will, amended cases, limitations in many majority’s concept protection “convert the grant history estoppel hardly an “estoppel” at into a hollow thing.” and useless Graver all. majority’s approach gives no Tank Mfg. & v.Co. Linde Air Products consideration to whether a reasonable 605, 607, competitor rely would on the nature of the L.Ed. 1097

rejections and of the amendments and course, Would-be copyists, exploit will statements applicant between the and the the majority’s Unwittingly, bar. the ma- examiner as evidence of a surrender of jority severely has limited protection matter. According majoii- ty, previously patentees. Indeed, once available to there has been a limiting amend- ment, may nullify no it may consideration given doctrine rejection, breadth of the Under the majority’s approach, anyone closeness art, of the prior the manner of who appli- patentee’s wants steal a technology amendments, cant’s remarks and need only review the history to nature of technology. identify All patentability-related amendments, Chisum, Patents, 18.05[l][a][i],

Donald S. § Chisum on at 18-416. many has decided Supreme to The Court modification trivial make a then and pros relevant to more than thesе six cases to corresponding product part of its that Hurlbut v. Schil history estoppel. ecution All the other limitation. claim an amended 456, 584, L.Ed. 9 32 linger, 130 S.Ct. U.S. The copied precisely. may be limitations (1889), noteworthy particularly is one 1011 make, use, to then be free will competitor case, Supreme ruled wherein the Court pat- the variant of insubstantial or sell an por had disclaimed a patentee, that a who that me appears It to invention. entee’s invention, had been his and who tion of the bal- approach upsets bar complete this precluded to be prior litigation found in has struck. Supreme Court ance the that ac against claims one asserting his will patentees most approach, Under this disclaimer, light device in of that cused that against copying protection lose the judg to a nonetheless remained entitled unanimously reaffirm- Supreme the Court infringement by a different device ment of ed in Wamer-Jenkinson. his closely equivalent to that was more majority also dis claimed invention. Precedent Supreme II. Court repeatedly ar regards legal the standard by Court that Supreme ticulated the Supreme that the majority asserts approach a flexible consistent with or never “addressed answered” has Court i.e., that an history estoppel, scope as to whether question “an may infringed be if amended limita- after a claim remains equivalent part supplied omitted for a added or tion been amended has See, e.g., instrumentality.” War device or The ma- patentability. relating to reason 32, enkinson, at 117 at 520 U.S. S.Ct. ner-J Supreme from six language jority quotes Cordesman, 408, 1050; 109 U.S. Fay v. prosecution histo- dealing with Court cases 236, 244-45, 27 L.Ed. 979 3 S.Ct. these six and asserts that in ry estoppel,2 (1883). Furthermore, majority no actu- cases, analyze did “the Court Supreme that the Court recognizes where might avail- equivalents that al consistent, uniform doc has articulated ap- history estoppel able when prosecu the doctrine of trine for applying thereby posits plied.” The Court 1880s, with history estoppel since say” that this it is fair to think “[w]e or suggestion Wamer-Jenkinson no I with the open. agree question remains depart sought that it other cases recent cases, that, in four of these six majority holdings. from its earlier did not address Supreme Court decided cases I cite were Many As to the other bar. question presently them, I discussing States, the 1800s. Before cases, 179 Hubbell v. United two general points (1900), to make three 24, would like 45 L.Ed. 95 77, 21 S.Ct. U.S. First, Su- 593, precedent. about this older 6 Corrigan, v. 116 Shepard and U.S. (1886), very active majori- preme Court was 493, 29 L.Ed. 723 S.Ct. 1900, From 1880 in the late 1800s. Most field different conclusions. ty and drawI ninety than however, no fewer the Court hardly agree I decided can importantly, cases, many with infringement that, upon a review my colleagues being highly relevant cases, they these cases Supreme six Court only these review of these my From present appeal. draw conclusion rightfully can cases, number of cases far fewer ad- and the the Court “answered never has 1900s, appears it the Court decided today’s question. dressed” 668, Warner-Jenkinson, 256 U.S. E.H. Freeman Elec. Co. v. 520 six cases are These (1921); 17, 1040; 600, Supply 1162 Hubbell S.Ct. at S.Ct. 65 L.Ed. Exhibit U.S. at States, Corp., 315 U.S. v. Ace Patents U.S. Co. v. United (1942); Smith 86 L.Ed. 736 (1900); Carrigan, S.Ct. Shepard v. L.Ed. 95 Club, City Magic Kennel 29 L.Ed. S.Ct. (1931); Elec. S.Ct. 75 L.Ed. Weber (1940) con (citing Leggett the Court established basic 85 L.Ed. 132 1800s, law in the in tours of late basis of holding), nothing find equivalency estoppel, cluding suggest presence on reissue below, principles patent, has reaffirmed these same ever in several cases cited alters Indeed, legal since. more recent standards articulated Warner-Jenkinson, cases, resolving disputes such as Court involving 31, 117 1049-50; prosecution history estoppel 520 U.S. at Grav claims is- Rather, in original prosecution. sued Manufacturing er Tank & v.Co. Linde Co., 605, Supreme 608-09, compared original Court Air Products 339 U.S. 70 854, 856, (1950); and reissue claims to measure the S.Ct. 94 L.Ed. 1097 Ex estoppel, treating the reissue claims like Supply Corp., hibit Co. v. Ace Patents 315 amended 126, 136, 513, claims. 518-19, U.S. 62 S.Ct. 86 (1942); Magic City L.Ed. 736 and Smith v. Finally, although older these cases do Club, Inc., 784, 790, Kennel 282 U.S. 51 specifically not recite either synony of the 291, 293-94, (1931), S.Ct. 75 L.Ed. 707 are phrases mous “prosecution history estop- degree remarkable in the they which pel” or wrapper estoppel,” princi “file cases, century cite nineteenth and in their ples articulated in these cases form the express adhering insistence on to older core of the prosecution history doctrine of

precedent. estoppel that we applied today. have until phrase The “file wrapper estoppel” Second, was old, in being addition to many of employed by Court until the cases I patents.3 cite involve reissue its Supply decision Exhibit Co. v. Ace But the prosecution history law of 126, 128, Corp., Patents 315 U.S. 62 S.Ct. developed equal has applicability to 513, 515, (1942), 86 L.Ed. 736 and the patents original reissue patents whose Supreme Court did not use the phrase during claims were prosecution. amended “prosecution history estoppel” until War By 1879, at least the Supreme Court rec- ner-Jenkinson, 30, 520 U.S. at 117 S.Ct. at ognized process that of obtaining a Nonetheless, recognized Court patent precluded reissue the patentee from many Wamer-Jenkinson that recapturing that which he had disclaimed below, cases I cite surrendered) such as (i.e., Sutter and through the reissuance Hubbell, indeed set forth principles process. Leggett See v. Avery, 101 U.S. present our “prosecution 256, 260, histo (1879); 25 L.Ed. 865 see also ry estoppel.” Warner-Jenkinson, See Union Cartridge Metallic Co. v. United 30-31, at at Co., S.Ct. 1049-50. I 624, 642, States Cartridge 112 U.S. believe that 475, (1884) absence of 485, phrase S.Ct. 28 L.Ed. 828 (apply- “prosecution history estoppel” in ing the cases principles prosecution history estop- hardly cite is a convincing pel basis for dis patent). claims reissue Consider- tinguishing them. ing Leggett, which concerns a reissue patent, is the foundation for much of the Goodyear A. Dental Vulcanite v. Co. subsequent Court’s treatment of what we Davis “prosecution now call history estoppel,” see, e.g., Schriber-Schroth Co. v. Cleveland One the first cases which the Su- 235, Trust 311 U.S. preme Court principles discussed the un- 3. The Patent paten- 640, Act of 1836 authorized a Gage Herring, see also v. 107 U.S. 644— tee to original surrender the 45, 819, claims of his 27 L.Ed. 601 patent patent and to obtain a reissue whenev- governs Patent Act of many invalid, er “inoperative, was by- or below, of the cases discussed change made no reason of a defective descrip- or insufficient provision, except this for the deletion of the specification, tion or pat- or reason of the "description words or.” Patent Act of claiming specification entee in his as his own 198-217, Ch. (July § Stat. invention, more than he had or shall have a 1870); 644-45, Gage, see also 107 U.S. at right to claim as new.” Patent Act of S.Ct. at 823. 4, 1836); Ch. § (July Stat. ap- only consistent with flexible ment is prosecu doctrine derlying present our history estoppel, proach estoppel is also one Dental Vul if the had Goodyear meaningless Court would most instructive. Davis, apply. complete intended a bar canite Co. (1880) a reissue concerns

26 L.Ed. Moreover, Cum- the Court stated that claim plate, dental a rubberized for against equivalents mings protected or vulcan- hard rubber plate of ing “[t]he not.” had claimed them or “whether he artificial ite, holding equivalent, its statement, the clarified By Id. this substantially as teeth, gums, or teeth necessary patent appli- that it was not recog Supreme Court described.” the words Cummings to recite cants like had Cummings, patentee, nized “substantially as de- equivalent” or “or its during the claims reissuance restricted his claims, rather but scribed” made of hard plate dental process protection against equiva- patentees’ rubber, and thus Cum “vulcanized” particular independently of the lents arises a asserting that precluded from mings was wording of the claims. (a softer, made of celluloid plate dental material) distinct, unvulcanized chemically Goodyear the majority argues that claimed invention. equivalent was an discuss Court “did not Notwithstanding this restriction particular agree I that estoppel.” Court equivalents, of scope available no- history estoppel” phrase “prosecution Cummings could that nonetheless stated However, Goodyear. appears where that by products other infringement assert Goodyear are articulated in principles those equivalent recited were of of the modern doctrine the foundation patent: Indeed, the history estoppel. there If, granted, was when the opinion to discuss Supreme first Court’s substances, rub- other than known were wrapper estoppel,” “file of doctrine caoutchouc, or gutta-percha, or ber Corp., Supply v. Ace Patents Exhibit Co. by the could be vulcanized gums, that 513, 515, 315 U.S. a converted from Goodyear process, and (1942), specifically mentions L.Ed. 736 material, hard, any use a elastic soft into It is a of that doctrine. Goodyear basis as might plate a that for dental of material out, that true, majority points also for the Cum- equivalent an have been rule favor did not Goodyear material, infringement an and mings language thus that patentee, patent. his I holding. a constitute I cite does not added). The Court (emphasis Id. at 227 however, majority, agree cannot continued, although that Cum- stating fail to consti- that the Court’s statements vulcan- limited his claims a mings had lan- carefully considered “explicit tute from precluded was thus product, ized may Goodyear that the rule guage,” and softer, cellu- of a equivalence asserting the Rather, as I will describe disregarded. loid, Cummings product, unvulcanized cite, the Court soon case in the next against protection retained nonetheless hold applied principles these thereafter may “It stated: The Court equivalents. range of enforce- patentee retains that patentee protected be conceded having made despite equivalents, able his any part against equivalents his available that restricted disclaimer added). (emphasis Id. invention.” range equivalents. Thus, although recognized the Court claims, may be amending his patentee, Schillinger v. B. Hurlbut large range of asserting a precluded 456, 9 Schillinger, 130 U.S. Hurlbut v. be able to assert may he still equivalents, (1889), and an L.Ed. 1011 a S.Ct. that fall within against devices his case, earlier related state- This range narrower Artificial California Schalicke, Stone-Pav Co. 7 from asserting infringement by the defen- (1886), L.Ed. 471 concern a arrangement pavement. dant’s Al- improvement for an concrete though the employ Court did not pavements, claiming “arrangement an of phrase “prosecution history estoppel” to equivalent adjoin- tar-paper or its between describe this limitation on the effective concrete,” ing blocks of such that the im- patent, of his I think it apparent position tar-paper paving between the that Schillinger’s disclaimer had invoked blocks would facilitate the removal of a such an estoppel. subsequently block that becomes damaged, Schillinger’s second suit to reach the disrupting adjacent without blocks. Schil- Court, product the accused linger patent, obtained a reissue amending arrangement pavement whose indi- state, original specification among blocks, plastic, vidual while still sepa- were things, other cheapness “where is an rated from one another means of a object, tar-paper may be omitted and Hurlbut, trowel. See interposing the blocks formed without any- S.Ct. at 588. recognized The Court

thing joints.” between their Id. at the stroke of a separate trowel to patent, S.Ct. at 586. In his reissue Schil- blocks was inserting different than tar- linger also obtained claim that omitted paper between the blocks. See id. The tar-paper reference to equiva- its recognized Court also Schillinger had lent. protective limited the scope of his reissue obtaining After his patent, reissue Schil- disclaimer, through his and was linger filed a disclaimer with the Patent precluded thus asserting from his claims Office, stating that his reissue claim was against pavement arrangements wherein broad, too and covered pavement kinds of the blocks were separated. not See id. at your petitioner “of which was not the first 466, 9 S.Ct. at 587. The Court nonetheless inventor.” Id. at 9 S.Ct. at 586. held that Schillinger was still entitled to a Schillinger any disclaimed coverage to an range of equivalents after having made his arrangement pavement of wherein the tar- disclaimer, and using that a trowel sepa- paper is and omitted no material is used to rate the equivalent blocks was using separate the concrete blocks. See id. tar-paper. The Court stated: Schillinger brought against suit several The effect of the disclaimer was to leave competitors, and two of the disputes the to be pavement one for a first, reached the Court. the wherein the blocks by are formed inter- Paving, 406-07, 119 U.S. at California S.Ct. at posing some separating material be- the Court remarked that tween them. To limit the the paving accused separated was neither permanent blocks, interposition into individual and material nor had of equivalent to tar-paper, material would limit interposed been the between the actual invention. they blocks while The use of a were bottom plastic. still The layer cement, of Court noted that coarse and placing it on Schillinger had dis- cement, claimed “the course of fine forming dividing of blocks and plastic from the upper material without course into interposing by blocks run anything be- trowel joints tween partially their while in or process wholly through the upper of the formation.” Id. at course while plastic, it is in a S.Ct. line coinci- The Court found infringement, joints no dent with the conclud- between the sections ing that “what the in just layer, defendant did the accomplishes was lower the sub- what the patentee disclaimed.” Id. at stantial Schillinger’s results inven- of Thus, tion, S.Ct. at 395. it is clear substantially in way by devised Paving him, Schillinger’s dis- and is within the patent as it California claimer was preclude sufficient him stands the disclaimer. after claims, added). infringed the literally but had (emphasis at 587 Id. of the issue “did discuss that the Court continued, emphasizing The Court un- that remained equivalents com- of not to was of disclaimer effect after the asserting of the doctrine Schillinger from der preclude pletely however, that agree, scope of I do not disclaimer.” rather that but equivalence, “equiva- refer- of the words presence the mere determined preclusion Schillinger’s “substantially” that Sehil- or embodiments lent” to the actual ence in- stat- reduces the language Court somehow The claim linger had surrendered. in- to one literal analysis fringement ed: above, the Good- noted fringement. As took out disclaimer first patentee clear year Court made there- only so much the reissue claim of he “whether against equivalents, made protected pavement a concrete as claimed Goodyear, not.” had claimed them or in detached material laid plastic of the at the heart at 230. tension blocks, anything interposing without formation, meaningful pat- disputes these process joints in —between public no- adequate such protection to be one for ent leaving that blocks, whether regardless when persists in detached pavement laid tice— blocks,' claims or recited in the “equivalents” are made between are joints free tempo- or the doctrine implicitly through interposing permanently are claimed them, legal process I believe that rarily between equiva- its formation, Hurlbut tar-paper employed by or their framework range lent. to limit whether Schillinger applies available added). conclud- The Court (emphasis Id. “or its “substantially” or not the words constituted pavement that the accused ed in the claims. equivalents” appear invention “as claimed equivalent an disclaimer,” thus after it stands simply holding Hurlbut The Court’s judgment to a was entitled Schillinger it estab- principles stated: The Court infringement. cases, the In both Goodyear. in lished the are, therefore, opinion appli- We the recognized Court reissue, it stands as had claim of the first and amendments cants’ disclaimers disclaimer, infringed, be- is asserting the after the from the patentees precluded a con- is pavement cause the defendant’s devices. certain accused equivalence of that, in blocks laid detached pavement, however, cases, crete the Court stated both sections, amendment, the manner substantially in the or or the despite disclaimer specification in equiv- the shown described a limited retained patentee in the reissue, blocks its the detached articulated Although the Court alents. the being equivalent holding the in course upper Goodyear in without reasoning of the Schil- or sections princi- detached blocks these same patentee, favor of the second and that clear pavement; linger of the Court’s ples are foundation because infringed, is As I the reissue claim of patentee Hurlbut. holding cut- or of the trowel Hurlbut temporary cases, use Goodyear these read upper instrument, to divide ting range a patentee a entitle blocks, equivalent amendment. limiting into a course despite the fact Schillinger pat- tar-paper Holding Majority’s Contradicts ... C. ent. Cases Supreme Court Other Six added). (emphasis at 588 9 S.Ct. Id. Approach Flexible That Declare Schillinger noting that Today’s majority, History Estoppel. Prosecution “or “substantially” and phrases recited the cases two are the Hurlbut claims, Goodyear and ap- equivalents” its has most the Court where identified in Hurl- have the defendant argue that pears to fully described flexible approach its to there could be no infringement because: prosecution history estoppel. cases, These “If it combination, claima to a and be however, only are far instances specified elements, restricted to all must where the Court legal princi has set forth material, be regarded as leaving open only ples that are consistent awith flexible question whether an omitted part approach. Following are six more cases supplied by equivalent device or instm- where the Court set forth a legal standard mentality.” Id. at 3 S.Ct. at 244- that provides patentees who have added). 45 (emphasis Although Fay does claims, their original amended and who are not recite the words “prosecution history thus px-ecluded from asserting certain estoppel,” legal its standard has been re range equivalents, nonetheless retain peatedly by reaffirmed the Supreme right to assert a more limited range of Court, through Wamer-Jenkinson, as cases, In three of these governing Supreme Court declared that patentee history estoppel. Warner-Jenkinson, See who had introduced new claim limitation 520 U.S. at 117 S.Ct. at 1050 (quoting during prosecution or during reissuance States, Hubbell v. United 179 U.S. would be entitled to enforce his amended 24, 26, (1900), S.Ct. 45 L.Ed. 95 claims showing that in the accused de Fay). quotes turn Fay, subsequent as vice, “an omitted part is supplied an ly recognized by Wamer-Jenkinson, clear equivalent device or instrumentality.” ly that, indicates despite having amended States, v. 77, 82, Hubbell United 179 U.S. his through claims process, the reissuance 24, 26, (1900); S.Ct. 45 L.Ed. 95 Shep the inventor would still be able to assert Carrigan, ard v. 116 U.S. his against claims other devices that were (1886); 29 L.Ed. 723 Fay v. more closely equivalent to his invention. Cordesman, 408, 420-21, 109 U.S. 3 S.Ct. Fay’s legal standard would be meaning 236, 244-45, 27 L.Ed. 979 More less if the Court had intended to disallow over, Supreme Court restated this le equivalents for amended claims. gal standard verbatim Warner-Jenkin son, 520 U.S. at at 1050 S.Ct. 2. Shepard Carrigan Hubbell). (quoting Although In Shepard recited this legal same v. Carrigan, standard very same words separate (1886), four L.Ed. 723 the Court span occasions over the years, of 113 whether protector to considered a skirt lack day’s majority regards ing these “fluted plaited cases lack band or border” ing “explicit carefully and infringed considered lan claima that had been amended guage.” I cannot agree. to include such a limitation. The Court stated previous that its holding Fay, in 109 Fay

1. v. Cordesman 420-21, U.S. at 3 244-45, S.Ct. at was Cordesman, Fay “decisive 408, present case,” v. the 409, 109 U.S. 3 116 U.S. at 236, 237, 598, S.Ct. 495, 27 6 (1883), L.Ed. at 979 S.Ct. and con- thus that the “ cerned patents, proper three inquiry was a including reissue “whether an omitted patent, part for is supplied by mechanical saw an equivalent whose blade device or ” is alternately pushed pulled. and instrumentality.’ ‍​‌​​‌‌‌​‌​‌​​​​‌​​​‌‌​​‌​​​‌​​‌‌‌​‌​​‌‌‌​​‌​‌​‌‌‍(quoting Id. Fay, 109 reissue patent claims, 244^5) contained five U.S. at all 3 S.Ct. at (empha which added). were substantially sis amended from Despite ruling that paten- the the single claim of the original patent. tee had “explicitly See abandoned” claims to an id. at 3 S.Ct. at 239-40. Noting unplaited protector, that skirt the legal Court’s device, the accused a continuously rotating clearly standard contemplates that other saw, band did not embody adjustable an protectors skirt could be found to consti guard, saw as in recited an asserted claim tute “an equivalent device or instrumental of the patent, reissue the Court ity” ruled that of the invention in claimed the reissue

607 Spiegel v. Phoenix Co. 4. Caster gov legal standard the Again, Id. patent. verbatim, in repeated, Shepard is erning Spiegel, v. U.S. Phoenix Co. Caster Warner-Jenkin See Warner-Jenkinson. (1890), L.Ed. 10 S.Ct. at 1050. son, at S.Ct. a furniture caster. claims to concerns did not use Shepard the

Although dur- repeatedly narrowed claims had been history estoppel” “prosecution phrase the containing an a caster ing prosecution ap it limit the to describe collar, opening, elliptical housing in subsequently Supreme Court plied, the bearing. The Court collar rocker-formed invoking such as Shepard terpreted of a “is not the device that accused ruled at Supply, 315 U.S. Exhibit estoppel. See in- patented to” the similar construction as (citing Shepard at 515 62 S.Ct. device did vention, that the accused estoppel). wrapper file of doctrine basis such ‘rock- “any equivalent for contain not ” Robinson v. 3.Sutter thus that bearing,’ collar er-formed Robinson, 119 U.S. Id. at infringement. v. no In Sutter was there (1886), added). paten- 30 L.Ed. The Court (emphasis S.Ct. “resweating” apparatus claimed an doc- tee of the not foreclose did appli During prosecution, tobacco. paten- light trine of his claims avoid cant amended amendments, but narrowing multiple tee’s aspect was art, the inventive stating that device the accused inquired whether still metal, wooden, rather than use of a for” the “equivalent or an “similar to” was The Court stated the tobacco. vessel ma- Although Id. claimed invention. in the case question” that “the ultimate in- does not that Phoenix suggests jority “whether, an apparatus, in such the Su- history estoppel, volve boxes, cases, packages, or or use of the Phoenix subsequently cited preme Court originally leaves are the tobacco the heart supporting proposition as equivalent producer packed “[i]t mentioned wooden tobacco-holder consistently construction a rule Id. at specification.” complainants’ al- in a observed added). Al (emphasis 7 S.Ct. at interpreted with read and must be lowed the accused found that the Court though have been сan- to claims reference infringe not could device allowed rejected and the claims celled amendment, applicant’s light of cover read to construction cannot clearly con question” “ultimate Court’s pat- thus eliminated what was devices, although templates other v. Cleveland Co. ent.” Schriber-Schroth invention, patented copies exact 211, 220-21, Trust aspect the amended infringed might have 85 L.Ed. equiva the claim under course, question,” This “ultimate lents. Coupe intended Royer if the Court be irrelevant

would dis equivalency govern complete bar 524, 13 146 U.S. Royer Coupe, v. In The amended claims. involving putes (1892), circuit 166, 1073 36 L.Ed. S.Ct. aas Sutter Court cites Wamer-Jenkinson patentee’s of the light in held that court prose of the doctrine application proper amendments, claims his limiting multiple Warner-Jen estoppel. See history cution process eight-step restricted were 5, at 117 S.Ct. kinson, at 17 n. to that specification, described Sutter, “estoppel (noting that n. 5 1050 “ ‘a process, infringement find an where, prosecution, during patent applied followed to have must shown person required expressly Vas applicant the same process, substantially same plan structural device’s] [the that state described the result as is ”). reaching mode of his invention’ and not of was old 608 ” specifications.’ 530-31, Id. at 13 claim actually 80, granted.” Id. at 21 (quoting Royer S.Ct. at 169 v. me, S.Ct. at 25. To this reference to “fair Manufac turing 853, F. 20 construction” can be a reference to (C.C.N.D.Ill.1884)) added). (emphasis equivalents, doctrine as the Court Supreme fully Court endorsed ap this recognized patentee that the retained the proach limiting right prohibit infringement by “an equivalents, doctrine of holding that “[w]e equivalent device instrumentality.” As are of opinion that the views set forth by above, noted legal Hubbell’s standard is sound, the circuit court are and that the quoted Warner-Jenkinson, verbatim in decree must be affirmed.” Id. Royer thus 32, 117 520 U.S. at S.Ct. at 1050. patentee confirms with an amended Although the majority suggests that the may still rights assert his against Hubbell Court did not prosecu “diseuss[ ] those utilizing “substantially pro the same history estoppel,” Supreme Court cess” as the claimed invention. Id. Al has indeed interpreted ap Hubbell as an

though phrase “prosecution history es- plication of prosecution history estoppel. toppel” is nowhere in Royer, found Warner-Jenkinson, See Supreme Court U.S. at 31 n. subsequently interpreted 5, 117 S.Ct. at Royer 1050 n. 5 (citing as invoking such an Hubbell as estoppel. See holding Keystone “patentee Driller estopped Co. v. from ex Engi Northwest cluding neering a claim Corp., element U.S. where element S.Ct. (1935) was added L.Ed. 747 objections overcome (citing Royer based argue “[w]here lack of novelty such broad prior patents”). claims over I are denied substituted, do not agree narrower with the majority that the patentee is estopped to granted read the absence of “prosecution the words history claim as equivalent estoppel” of those Hubbell and in the other cases rejected”). were discussed above somehow means that the Supreme Court “did not discuss the issue v. 6. Hubbell United States presented in En Question Banc Rather, 3.” In States, Hubbell believe v. United that the Supreme U.S. has re peatedly (1900), 45 L.Ed. 95 set forth a paten- legal standard that tee repeatedly preserves had the right patentees amended his claims to a to assert bullet cartridge. notes, As the majority amended claim limitations. the Court recognized that these amend- ments “must be strictly against construed D. Wamer-Jenkinson Reaffirms Earli-

the inventor favor of the public, and Supreme er Court Précedent. looked upon in the nature of disclaimers.” Id. at 21 S.Ct. at Court’s Court, most 27. The recent deci however, sion regarding prosecution nowhere suggested estop- these pel amendments foreclosed remarkable for patentee the extent to which it all protection against reaffirms earlier precedent To the and affirma contrary, tively supports Court asked the application whether the ac- of flexible cused device estoppel. contained Warner-Jenkinson, the limitation at See “ issue, or, not, if it did U.S. ‘whether 117 S.Ct. at [the] analyzing part omitted supplied by an whether equivalent prosecution history estoppel pre ” device or instrumentality.’ Id. cludes a finding that an accused product S.Ct. at 26 (quoting Fay Cordesman, infringes amended claim under L.Ed. 979 equivalents, the Court said (1883)) added). (emphasis The Court rec- that may courts determine “the reason ognized that, although the claims had for” been and the “manner” of the amendment. amended, the patentee was still 7, “entitled Id. at 33 n. 117 S.Ct. at n. 7. 1051 Such to a fair construction of the terms of his an analysis would be unnecessary, of

609 decisions such Supreme Court on older complete intended course, if the Court Corp., Ace Patents v. Chisum, Supply on Co. Exhibit Chisum S. 5 Donald See bar. 126, 513, (“Refer 86 L.Ed. 736 62 S.Ct. 18.05[3][c], 315 U.S. Patents, at 18-509 § v. Northwest (1942), Keystone Driller Co. amendment ‘manner’ ence 42, 55 S.Ct. Corp., 294 U.S. Engineering consider may indeed court that a hints (1935), Magic v. 262, 747 Smith 79 L.Ed. some room leaves an amendment whether 784, 788, added.”). Club, Inc., 282 U.S. City Kennel limitation (1931), 291, 293, 707 75 L.Ed. may 51 S.Ct. the PTO that assumes The Court America v. Auto Co. Computing Scale estop- rule “upon a flexible relied have 618-20, 609, 27 204 U.S. matic Scale applications, evaluating patent when pel” (1907), Hubbell v. 307, L.Ed. 645 51 “to S.Ct. improper if it would that so 24, States, 21 S.Ct. 179 U.S. the PTO.” United assumptions the basic upset (1900), 26-27, and Sutter 32, L.Ed. 95 Warner-Jenkinson, 117 45 at 520 U.S. 376, 541, Robinson, 7 119 U.S. S.Ct. has Professor Chisum 1050. As at

S.Ct. The Court’s L.Ed. 492 30 pre “as stated, Wamer-Jenkinson to read descrip- and its cases on its earlier element reliance for a claim cluding equivalency all in each of methodology adopted by the driven amendment by an added that the Wamer-Jen- indicate to the Su those cases contrary be] art prior [would or not intend to overrule did ‘rigid’ estop- kinson Court rejection Court’s preme in- precedent; Chisum, this change well-established S. Donald approach.” pel cases, deed, the Wamer- citing to these Patents Scope Protection After approach. endorsed their Court Deci Jenkinson Wamer-Jenkinson Supreme Court’s Further, cases cited in War- many of the Protection-Certainty Co The Fair sion: rely on themselves L. ner-J nundrum, High Tech. enkinson Computer & believe, which, added). I above cases I discuss (1998) (emphasis J. Hubbell, See, e.g., flexible bar. declare a however, Wamer-Jenkinson, did estab Fay v. (citing at 26 at S.Ct. 179 U.S. for cases where special presumption lish Cordesman, 3 S.Ct. 109 U.S. no reason history reveals Driller, (1883)); Keystone L.Ed. 979 In these lim narrowing amendment. for a Royer v. (citing 55 S.Ct. at at U.S. circumstances, held that ited 166, 36 L.Ed. Coupe, U.S. amendment applies that presumption (1892)); U.S. at Supply, 315 Exhibit patenta- to a reason related was made for (citing Goodyear, at 518 62 S.Ct. if the later patentee that bility, and (1880)). The Wamer-Jenkin- at to a bar presumption, that unable rebut clearly methodolo- endorsed son Court claim limitation applies Su- of earlier pedigree in this applied gy See Warner amendment. by the added back to spanning cases preme Court -Jenkinson, War- century. I believe that nineteenth holding does Although the Court’s the principles reaffirms ner-Jenkinson a bar would resolve whether explicitly Hurlbut, Goodyear forth Court set circumstances of the factual apply outside re- these nine cases and underscores sug case, opinion nothing today. binding on this court main limit so the Court intended gests that the doctrine Authority Federal Circuit III. holding in Wamer- Court’s That above, today’s recognize narrow, As not in noted indeed Jenkinson authority to overrule has the en banc court law upset established tended court, and thus of this prior decisions by its extensive underscored estoppel, is flexible applying decisions our back to 1886. dating precedent on reliance binding are not existing measured alter the invitation declining following I present court. en banc rules, Court relied the Warner-Jenkinson 610 law, however,

review of our case high- Professor opines Chisum there are light magnitude of today’s sudden “two lines authority,” it neglects to men shift, suggest approach and to that the tion that the second “line” only consists of today’s majority contrary is notion Chisum, two cases. See supra, judge-made law should evolve 18.05[3][b][i], (“Two § at 18-496 Federal consistent, gradual, and predictable fash- panel Circuit decisions articulated the ion. strict approach to estoppel.”) (emphasis added). Kinzenbaw Prodyne and Enter Adoption A. Estoppel Our of Flexible prises, Pomerantz, Inc. v. Julie Only Established the 1983 True U.S.P.Q. (Fed.Cir.1984) 223 477 Authority” “Line of in This Cir- (Rich,4,Friedman, Cowen), however, do not cuit. hold that the mere fact of amendment Goodyear, Hurlbut, Consistent with and triggers a complete estoppel; they simply other Court cases reviewed stand for the rule that courts will not above, this court has held in over fifty “speculative undertake inquiry” into decisions scope that the of estoppel is mea- necessary. whether a claim amendment scope sured of surrender. In zenbaw, 741 F.2d at Kin Hughes States, Co. v. United Aircraft U.S.P.Q. 933; Prodyne, 743 F.2d at F.2d U.S.P.Q. (Fed.Cir.1983) U.S.P.Q. at 478. Davis, Baldwin) {Markey, (“Hughes /”), It is true that Prodyne Kinzenbaw and this court rejected a application “wooden which, contain language alone, taken of estoppel,” and held that application arguably consistent with complete bar history estoppel does not imposed by the face, court today. On its strip patentee of all resort to the doc- however, neither opinion departs from our trine of equivalents. Id. The court stated: seminal ruling only the year before Depending on the nature purpose Hughes fact, I. In each opinion purports to amendment, may it have a limiting follow quotes Hughes I. See Kinzen effect spectrum within a ranging from baw, 741 F.2d at 222 U.S.P.Q. at 933 great to to zero. small The effect may (“An applicant ... is not re may not be application fatal to of a quired predict all developments future range broad enough to which enable the practice of his invention encompass particular product. accused in substantially way.”) the same (quoting It is not the doc- fatal I, Hughes 717 F.2d at U.S.P.Q. trine itself. 481); Prodyne, 743 F.2d at added). (emphasis Id. (“The U.S.P.Q. at 478 prosecu Today’s majority, however, suggests estoppel precludes a patent I, Hughes since this court has estab owner from obtaining a claim construction lished two “lines of authority” adopting that would subject resurrect matter sur “inconsistent” views on of prose during rendered pat his cution history estoppel: one school origi ent application.”) I, (quoting Hughes nating Hughes with I favoring flexible es- 481). F.2d at 1362, 219 U.S.P.Q. at toppel; second school originating Further, Kinzenbaw v. Deere & F.2d a close reading of the opinion (Fed. U.S.P.Q. Cir.1984) in each case shows that rather than substi- {Friedman, Markey, Rich, Davis, tuting a complete Bald bar for flexible win), favoring a complete bar. based disagree surrender, on actual panels did with that assessment. my opinion, indeed look to the exact scope of surren- there one “line of authority.” der. They simply found that the surren- While the majority correctly notes that der covered the accused matter. 4. The Underline name opinion’s refers author.

611 estoppel. of concerning scope the 389, Kinzenbaw, game” 222 at F.2d 741 See (citation 1457, U.S.P.Q.2d at 1326 accused Id. (“Instead, at 46 [the 933 U.S.P.Q. at omitted). “the en- that further noted that very element We adopted the infringer] of the Warner-Jenkinson stat eliminated the had tire patentee] context [the re avoiding ap- the examiner’s Supreme of that the Court purpose shows opinion ed Pro patent.”); obtaining practice requesting of jection the PTO’s proved 1583, U.S.P.Q. at 478 at 223 dyne, F.2d that understanding 743 with the amendments from now broaden estopped (“Prodyne is ap- still equivalents would the doctrine lim a claim element description of ing the Id. at language.” the amended ply to encompass so as during prosecution ited 1456-57, U.S.P.Q.2d at 1326. 46 should rea competitor

a structure v. Co. Hughes Similarly, in Aircraft not within to believe is sonably entitled States, 1470, 46 140 F.3d United in claims the patent legal boundaries (Fed.Cir.1998) (Archer; U.S.P.Q.2d 1285 suit.”). holdings of these light of In II”), (“Hughes Rader, issued the Bryson) cases, language from the apart two Litton, panel a different day as same my on, agree cannot I majority relies key prose that “the indicated this court two have established that we colleagues is the surrender history estoppel cution authority regarding lines of conflicting by the subject matter disclaimer history estoppel. un is then patentee patentee, which through doctrine to reclaim Interpretation able Original This Court’s B. 1476, at Sound, U.S.P.Q.2d Id. at 46 equivalents.” Was of Warner-Jenkinson Supply, 315 to Exhibit Majority (referring Ex- Has 1290 Not and the Sutter, 518-19; 119 at 62 S.Ct. Why Overrule at plained We Should U.S. 381-82). at While 7 Cases. at Earlier Our range of “serve to narrow amendments of deci- issued a series has This court pre are not all equivalents,” in which we since Warner-Jenkinson sions interpreted Wamer-Jen- Id. We cluded. interpreted consistently have that proposition kinson supporting as To- estoppel. flexible require law to Court an into the reason may inquire courts however, provide fails majority, day’s what “determine in order to amendment why we satisfactory explanation actually sur patentee matter Lit- cases. our earlier overrule should II, 140 F.3d at Hughes rendered.” Inc., F.3d Honeywell, v. Sys., Inc. ton Warner-Jen (citing at U.S.P.Q.2d (Fed.Cir.1998) U.S.P.Q.2d at n. at 33 kinson CRader, Newman, one Bryson), 7). 1051 n. light to us cases remanded three ruling in Wamer-Jen- Supreme Court’s Cybor Indeed, year, very same kinson, court, emphati- most this Tech.,Inc., F.3d FAS Corp. v. “longstanding doctrine adhered to the cally banc) (en (Fed.Cir.1998) U.S.P.Q.2d 1169 recapture of only bars that an banc, (Archer), court, sitting en stated our actually surrendered subject matter that is whether inquiry relevant “[t]he Litton, at 140 F.3d during prosecution.” believe reasonably competitor would court Our at 1325. U.S.P.Q.2d the relevant had surrendered applicant pros- application of “the clearly stated that 1457, 46 Id. subject matter.” not necessar- history estoppel does ecution how the see fail to at 1178. language to the literal patentee ily limit stabilize majority will when element —even the amended an en overruling doctrine made to overcome has been amendment old. years two decision banc art.” Id. We reasoned Avionique, Sextant year, Only last did intend Court Warner-Jenkinson Devices, Analog rules of the S.A. substantially the “change so (Fed. Cir.1999) (Lourie, U.S.P.Q.2d 1865 the patentee protection Smith, Gajarsa), this court followed Su infringement by equivalents. See id. preme guidance in determining the 831, U.S.P.Q.2d at 1874 (citing Keystone question Wamer-Jen- novel the whether Co., Driller 47-48, 262, 294 U.S. at kinson presumption complete of a ap bar 747, Magic City, 79 L.Ed. 282 at explained to plies unexplained both 291). 51 S.Ct. at The Sextant , See id. amendments. at 49 832 court noted that “Supreme Court case law U.S.P.Q.2d at Sextant court predating Wamer-Jenkinson embraced policies looked to the “foster[ed]” War concept scope in the context of ner-Jenlcinson guide See reasoning. its amendments made to art.” Id. prior avoid 831, id. at U.S.P.Q.2d 49 at 1875. The court noted Wamer-Jenkinson In my opinion, today’s majority has not Court presumption created the of a bar set forth credible explanation as why “claims ... because serve both a defini it is overruling our case law inter- public tional and notice function.” See id. preting Wamer-Jenkinson. The majority Warner-Jenkinson, (citing 520 U.S. at 33- asserts, merely citing only long “our expe- 35, 1051). 117 at The court noted: rience with the approach,” flexible bar policy “public This notice” heavily the standard applied we have until now is implicated in the circumstance in which “unworkable.” I feel that greater we owe presumption operative because, by deference to our past interpretations of definition, it is unclear to one reading Supreme law, Court or a explana- better history why a particular why tion of our case law is suddenly seen amendment Accordingly, was made. as “unworkable.” Court, through the operation pre- sumption, placed the burden on pat- 2000, C. From 1983 to clarify

entee to his reasons. This paten- Court Has clarify tee’s failure so Consistently and thereby Applied Flexible, rebut presumption should work Measured, Estoppel. to the public detriment of the by allow- Panels of this court have consistently ing an range equivalency uncertain Hughes I followed and flexible estoppel. remain as to the limitation at issue. Indeed, parade cases, in a from each

Id. at U.S.P.Q.2d 49 at 1875. The year of this court’s eighteen-year history, panel concluded that a complete bar ap- and randomly-selected successive panels of plies when Wamer-Jenkinson pre- this court have unanimously applied the sumption arises and remains unrebutted. rule, flexible bar and done so without men- id. See (“Unguided by newly-discovered of its history, prior art, “unworkabili- applicant’s argument ty.” indicates, As the during prosecution, list below our and sufficient evidence court in rebuttal has to the presumption, we embraced estoppel have no flexible in more way to set reasonable limits on fifty how far than cases. Ironically, these cases beyond the literal of the term ... were decided panels including nearly will allow the doctrine of every today’s member of majority. In reach.”). The court stated fact, most of the members of today’s ma- Wamer-Jenkinson, that under courts jority have unitten an opinion, and indeed apply must “a rule scope” different have done so Wamer-Jenkinson, since when an amendment is un Id. explained. supporting preclusion. flexible U.S.P.Q.2d 49 (emphasis аdded). highlight To degree today’s ex- circumstance plained amendment, majority however, departs law, our Sextant settled explicitly court Supreme provided followed have following list of cases and Federal precedent Circuit in allowing that today’s ruling overturns. Eng’g Co. v. Hitec 1987: Townsend Applying Circuit Cases

Federal Ltd., 1086, 1090, U.S.P.Q.2d 829 F.2d Estoppel: 1983- Flexible edman, (Fed.Cir.1987) (Fri 1136, 1139 Newman); Corp. Tandon Baldwin, v. United Hughes Co. 1983: Aircraft Comm’n, Int’l Trade United States States, U.S.P.Q. 717 F.2d F.2d (Fed.Cir.1983) Davis, (Markey, (Newman, (Fed.Cir.1987) Friedman, Baldwin): (“We, has the v. Durand- Archer); Corp. Pennwalt Court, amendment reject [that the view Inc., 2,n. Wayland, equiva all resort bars (Fed.Cir. 1737, 2 U.S.P.Q.2d 1743 n. estop- application of as a wooden lence] 1987) (en banc). entirely the doctrine pel, negating Prod., Inc. v. American 1988: Hi-Life limiting determination equivalents Corp., 842 F.2d Nat’l Water-Mattress issue to consider infringement (Fed.Cir.1988) 1132, 323, 325, U.S.P.Q.2d 6 1134 alone.”). infringement literal ation of sell, Markey, (Bis Davis); Wa Duphar v. Aktiengesellschaft Bayer 1984: Calco, Ltd., Corp. v. F.2d ter Techs. 850 B.V., 1237, 1243, Int’l Research F.2d 738 (Fed.Cir.1988) 1097, 660, 667, U.S.P.Q.2d 7 1102 (Fed.Cir.1984) 649, U.S.P.Q. 653 222 es, (Ni Archer, Skelton); Di Bennett) (“[Wjhenev (Kashiwa, Cowen, Inc., Century Steps, Corp. v. versitech history estoppel file the doctrine of er 675, 681, 1315, U.S.P.Q.2d 7 850 F.2d invoked, must be a close examination (Newman, Davis, (Fed.Cir.1988) 1320 to, was surren made as what Archer). dered, reason for such also the but LaBounty Mfg., Inc. v. United 1989: fact that claims were surrender. Comm’n, Int’l Trade F.2d States 867 always mean that the does not narrowed 1995, 1572, 1576, U.S.P.Q.2d 9 1999 com history estoppel file curiam) (Fed.Cir.1989) (Nies, (per Bis- recap patentee pletely prohibits (“[T]he Archer) sell, of the breadth originally turing some of what necessarily equate does not amendment claimed.”). resulting estop- breadth Ltd., 781 v. Corp. 1985: Loctite Ultraseal Studs, v. ATA Equip. Inc. pel.”); Sun (Fed.Cir.1985) 90, 871, 861, U.S.P.Q. 96 F.2d 228 Inc., 987, 978, 10 Leasing, F.2d 872 Kashiwa). dwin, (Bal Davis, (Fed.Cir.1989) 1338, U.S.P.Q.2d 1345 Bennett) (“The (Newman, Friedman, Corp. Engi v. Demag 1986: Mannesmann estoppel must be determined scope of Co., Inc., F.2d neered Metal Prod. 793 art that occasioned the light (Fed.Cir.1986) 45, 1284, 1279, U.S.P.Q. 48 230 made representations as well as change, Cowen) (Ne wman, Baldwin, as to the reason examiner (“Amendment during patent of claims In Environmental change.”); for the all necessarily bar does not struments, Corp., 877 v. Sutron Inc. equivalents.”); the doctrine of benefit of 1132, 1566, 1561, U.S.P.Q.2d 11 F.2d Corp. v. Davis Core & Northern Great (Fed.Cir.1989) (Rich, Nies, Michel); 1136 Co., Inc., 159, 166, 228 Pad 782 F.2d Decker, Inc. v. Hoover Serv. & Black (Fed.Cir.1986) 356, U.S.P.Q. 359-60 Ctr., 1285, 1295, U.S.P.Q.2d 12 886 F.2d (Rich, v. Kashiwa); Moeller Markey, (Fed.Cir.1989) (Markey, 1250, 1258 Ionetics, Inc., 659, 653, F.2d 229 794 Archer). Newman, (Nich (Fed.Cir.1986) 992, U.S.P.Q. 996 Works, Stanley F.2d v. 903 ols, Friedman, Eng’g 1990: Jonsson Smith); Chemical (Fed.Cir.1990) 1863, Indus., Inc., 812, 817, U.S.P.Q.2d 1868 14 795 F.2d Corp. Essef Newman); e, Hor (R 385, Markey, 8, n. 1565, U.S.P.Q. 391 1573 n. 230 Found, Inc. v. Genen Research Rich, mone (Fed.Cir.1986) (Markey, Bald 8 Inc., tech, 15 F.2d win). 904 614 (Fed.Cir.1990) Inc., Separations, Micron

U.S.P.Q.2d 1044 66 F.3d (Archer, Cowen, Michel); (Fed.Cir.1995) Insta-Foam U.S.P.Q.2d 36 Prods., ewman, Rich, (N Inc. v. Universal Foam Sys., Mayer). Inc., 698, 703, U.S.P.Q.2d 906 F.2d Mfg., Modine v.Co. United States 1996: (Fed.Cir.1990) (Archer, May Comm’n, Int’l Trade 1545, 1556, 75 F.3d Skelton). er, (Fed.Cir.1996) U.S.P.Q.2d 1609, USA,

1991: Dixie Inc. v. Corp., (Newman, Mayer, Clevenger); Athletic Infab 584, 588, U.S.P.Q.2d

F.2d 1970- Alternatives, Inc., Inc. v. Mfg., Prince (Lourie, (Fed.Cir.1991) Mayer, 1573, 1582, 73 F.3d Friedman) (“Appellants argue they (Fed.Cir.1996) (Michel, Nies, Cle degree should be able to obtain some Tech., venger); Inc. v. Cat Insituform equivalence prosecu even the face of Inc., Contracting, 1098, 1101, 99 F.3d history estoppel, and that a total (Fed.Cir.1996) U.S.P.Q.2d 1602, 1609 preclusion equivalence ap should not (Michel, Schall). Archer, ply. general As a proposition, 1997: Hilton Davis Chem. Co. v. Warner ”); Vaupel Tex principle is correct ... Co., Inc., -Jenkinson tilmaschinen KG v. Meccanica Euro (Fed.Cir.1995) U.S.P.Q.2d 1641, 35 1651 S.P.A., Italia 870, 882, 944 F.2d 20 Labs., curiam); Wang (per Inc. v. Mitsubishi 1045, (Fed.Cir.1991) U.S.P.Q.2d 1054 r., Inc., Elecs. Ame 103 F.3d (Lourie, Newman, Rader); Laitram 1571, 1578, 1263, 41 U.S.P.Q.2d 1269 Corp. Corp., v. NEC 1357, 952 F.2d (Rich, Mayer, Schall); (Fed.Cir.1997) 1361, (Fed.Cir.1991) U.S.P.Q.2d 1276, 21 1279-80 Inc., Airlines, Lockwood v. American (New man, Rader). Archer, 1565, 1574-75, 107 F.3d 41 U.S.P.Q.2d Co., 1992: Charles & Greiner Inc. v. (Fed.Cir.1997) (Lourie, 1961, 1968 May Inc., Mfg., Mari-Med 1031, 962 F.2d er, Rader). 1036, (Fed.Cir.1992) 22 U.S.P.Q.2d 1526, 1530 Tech, Inc., Cybor Corp. v. FAS 1998: 138 ader, (R Smith). Plager, 1448, 1460, F.3d U.S.P.Q.2d 1169, 46 Instruments, 1993: Texas Inc. v. United (en (Fed.Cir.1998) banc) (Archer); 1178 Comm’n, States Int’l Trade 988 F.2d Sys., Inc., Litton Inc. Honeywell, v. 140 1165, 1174, 1018, U.S.P.Q.2d 26 1025 1449, 1455, F.3d U.S.P.Q.2d 1321, 46 (Fed.Cir.1993) {Clevenger, Nies, Kauf (Fed.Cir.1998) (Rader, 1326 Newman, man) (“Application of this test [to deter (“In Bryson) accord Supreme with the mine patentee whether may assert Court’s understanding, this court has equivalents,] requires, repeatedly stated that case, each examination prosecu prosecution history estoppel does not whole.”); taken as a Wang necessarily limit patentee to the literal Labs., Inc. v. Toshiba Corp., 993 F.2d language of the amended element —even 858, (Fed.Cir.1993) U.S.P.Q.2d 26 1767 when an amendment has been made to (Lourie, Archer, Clevenger); Hoganas art.”); overcome Hughes Air Indus., AB Inc., v. Dresser 948, 9 F.3d States, v. Co. United 140 F.3d craft 951, 1936, (Fed.Cir.1993) U.S.P.Q.2d 28 1939 1470, 1476, 1285, U.S.P.Q.2d 46 1290 (Pl ager, Smith, Clevenger). (Archer, Rader, Bryson) (Fed.Cir.1998) Genentech, v. 1994: Inc. Wellcome Found. (“[T]he key history estop- Ltd., 1555, 1567, 29 F.3d U.S.P.Q.2d 31 pel is the surrender or-diselaimer 1161, (Fed.Cir.1994) (Plager, Cow 1170 subject matter patentee, Lourie). en, patentee is then unable to reclaim Techs., 1995: Southwall Inc. v. Cardinal through the doctrine equivalents.... Co., IG 1570, 1579, 54 F.3d 34 In evaluating the reason behind an U.S.P.Q.2d 1673, (Fed.Cir.1995) 1676 amendment, a court must ‘determine (Michel, Lourie, Bryson); Corp. Pall v. what patentee matter the actual-

615 (Fed.Cir.2000) 1711, 1717 Corp. v. U.S.P.Q.2d Laitram ”); ly surrendered.’ Inc., (Schall, Corp. KCJ Indus., 1456, Bryson); Clevenger, 143 F.3d Morehouse (Fed. Inc., 1351, Concepts, 1609, v. Kinetic U.S.P.Q.2d 1615-16 223 F.3d 1464, 46 Skelton); (Lourie, Michel, (Fed.Cir. Cir.1998) 1835, 1358, U.S.P.Q.2d 1842 Inc. v. Intel Amer. Group (Rader, North 2000) EMI Plager, Clevenger). 897, U.S.P.Q.2d 887,

Corp., 157 F.3d (Newman, (Fed.Cir.1998) 1181, 1189 Likely Majority’s Rule Will IV. (“Cancellation of a Bryson) Plager, and Adverse Con- Have Unintended broadly does not is written sequences the Pol- that Undermine to narrower always generate icies Advanced facts particular subject matter. Interpretation of the Doc- Court’s Prod., considered.”); Desper must be Equivalents. trine of Labs, Inc., 157 F.3d QSound Inc. v. 1088, 1338, 1325, U.S.P.Q.2d created The doctrine (Plager, Clevenger, (Fed.Cir.1998) Ga patent,” “fraud on a such as prevent Inc., Wings, L v. L & jarsa); Bai copying of the claimed inven- near-literal U.S.P.Q.2d F.3d merely insubstan- tion with the addition (Lourie, Rich, (Fed.Cir.1998) Rad liability to avoid changes tial order Tech., Inc. v. Con Cat er); Insituform Mfg. Tank & Graver infringement. literal Inc., tracting, Linde Air Prods. Co. v. U.S. (Fed.Cir.1998) 1610, 1614 94 L.Ed. Schall). (Michel, Archer, Denmead, v. Winans Mylan Upjohn & Co. 1999: Pharmacia (1853), was the 14 L.Ed. 717 15 How. Inc., 1377, Pharms., 1373, 50 F.3d 170 to the case address Supreme first Court (Fed.Cir.1999) 1033, U.S.P.Q.2d 1037 Winans, the equivalents. doctrine (Lourie, Newman, Avi Schall); Sextant to the doctrine adopted order Court Inc., Devices, Analog 172 v. onique, S.A. today’s the prеcisely abuse prevent 1865, 817, U.S.P.Q.2d 49 F.3d allow, namely, appropriation the will ruling (Lourie, (Fed.Cir.1999) Smith, 1870-72 by making trivial inventions patented Gay v. Med. Inc. Gajarsa); Augustine device. The to a claimed modifications Indus., Inc., F.3d 50 mar 181 right “the exclusive recognized that Court (Fed.Cir.1999) 1900, 1905 U.S.P.Q.2d secured, the if patented is thing Loral Fair Rader, (Mayer, Gajarsa); make liberty to substantial are at public 1313, Sony Corp., v. 181 Corp. child F.3d varying its form it, propor- copies (Fed.Cir. 1865, 1323, 1871 U.S.P.Q.2d 50 Tank, the In Graver Id. 343. tions.” at 1999) (Archer, Michel, Merck & Plager); necessity of the doc- the Court reiterated Inc., 190 F.3d Mylan Pharms. Co. stating: equivalents, trine of 1958 51 [Cjourts to recognized that (Newman, Lourie, Cle have also (Fed.Cir.1999) S.A., patented of a invention permit imitation Corp. K-2 v. Salomon 191 venger); every literal copy detail 1356, 1368, U.S.P.Q.2d which does not F.3d protection the (Fed.Cir.1999) Rader, Gajar- convert the (Clevenger, would be to and sa) (In into a hollow useless patent grant prevent infringers order invention, leave a limitation would thing. benefits of Such “stealing the encourage un- ... must for —indeed ... room the —the unimpor- make copyist estab scrupulous the within boundaries remain sub- changes and art, of the tant insubstantial lished themselves, which, though sur patent stitutions claims matter.”). enough to take subject nothing, would be adding rendered claim, outside copied matter Pharm. Research v. Elan Bayer AG 2000: of law. the reach hence outside Corp., F.3d (emphasis at Technologies, 339 U.S. at Inc. v. Cat Insituform added). Inc., Contracting, (Fed.Cir.1996). U.S.P.Q.2d 1602 The as- repeated petitions seeking to Despite pro- serted claimed a equivalents, the doctrine of abolish Su Insituform impregnating cess for the interior felt re- preme steadfastly Court has ruled that pair lining of an underground pipe with patentees protection. are entitled to its by using cup resin a a attached over hole Warner-Jenkinson, at See on the pipe apply outside of the (declining “speak S.Ct. at 1045 vacuum downstream of doctrine”). the resin. The court, of that death As lower thereby resin is along made to flow respect Supreme we must Court’s deci vacuum, pipe interior of the towards the patentees sion accord benefits permeating curing the felt and it. id. See equivalents. doctrine 'of I believe that the 1103, U.S.P.Q.2d rule, pat- at 1605. The majority’s providing new far from entee had amended the asserted patentees protections claim in response to an guaranteed, unfairly patent- examiner’s strips has most ability rejection to patentees right to assert include the limitation infringe ment vacuum applied sequentially under the doctrine of stepwise using cup fashion that was Today’s Ruling Copyists A. Provides repeatedly removed from one location with a Method Fail-Safe to Avoid along pipe and moved further down- Liability Infringement. stream once the profused resin had near original cup. location of the id. at majority See unpredicta- discusses the 1104, U.S.P.Q.2d bility prosecution history estoppel under approach, a flexible complete and how its A copyist’s step exploiting first to- public’s bar specu- “eliminates need to day’s then, ruling liability, to avoid would late as to the matter surrendered identify be to a claim limitation that was narrowing claim amendment.” As a Here, amended patentability reasons. problem solution to this of the doctrine of that is the limitation requiring the succes- equivalents, today’s ruling simply denies sive cup of a to different loca- doctrine, any resort to the for amended along tions the pipe. outside of the The claim limitations. then, second step, would be to determine Today’s will ruling copyists allow to the most convenient substitute for this lim- readily liability despite avoid practicing case, itation. copyist this could equivalent substantial of the claimed in- simply apply the vacuum simultaneously Anyone vention. seeking lawfully copy using cups. two As in Insituform, we held . patented a technology only will have to this would be sufficient to avoid literal (1) adopt following method: read the infringement. 99 F.3d at prosecution history identify U.S.P.Q.2d amend- at today’s 1608. And under reasons; (2) ments made for patentability ruling the amended limitation is not enti- copy every exactly, other limitation but tled any protection under the doctrine any substitute interchangeable known equivalents, so the copyist will have structure, matter, step or limita- succeeded in avoiding all liability by simply tion that Any has been change, amended. practicing invention, the claimed using but no matter “unimportant how and cups. insub- two stantial,” to even one amended limitation today’s ruling Because completely elimi-

will be liability sufficient to avoid under protection nates against known substitutes the majority’s rule. limitation, for the amended any competitor

The ease certainty and with which adopting this this method would be free from method applied may can be readily be liability, as the amended limitation is not appreciated -with reference to cases such literally met supplied by but rather is an barring to the doctrine me, Completely resort protection To equivalent. obvious for amended claim limita is the central copying” such “close against limit may drastically tions the doctrine office of biotechnology patents, such protection dan- clearly warned of this Supreme Court claiming protein a molecule. See as those at Tank. See 339 U.S. ger in Graver Amicus Brief on behalf of Chiron Curiae forthright and (“Outright at 856 70 S.Ct. at Corporation support Respondent very type rare a duplication is dull (No. 95-728). 16, 17, Warner-Jenkinson no would prohibit To other infringement. only can claimed protein A molecule be verbal- mercy the inventor place complete specific sequence as the subordinating substance be ism and would comprising protein. amino acids See him of deprive It would to form. particular § 1.821 37 C.F.R. invention.”). of his benefit comprise рrotein chain amino acids that moreover, history estoppel, Prosecution interchangeable with other frequently are very pur- By its equitable doctrine. changing protein without amino acids a rem- provides pose, equity jurisprudence As our court noted with or its functions. to the circum- individually tailored edy claiming protein respect As stated dispute at hand. stances of 3,600 [pro- different erythropoietin, “over by Court: substituting analogs can made tein] single [interchangeable acids] has equity jurisdiction

The essence of a million position, acid and over amino to do of the Chancellor power been analogs can be made substi- different to mould each decree equity and Amgen, amino acids.” Inc. v. tuting three case. Flexi- particular necessities F.2d Chugai Pharm. distin- rigidity has bility rather than (Fed.Cir.1991). mercy and qualities of it. The guished analogs functionally are identi- Many such instru- equity have made practicality Thus, a com- protein. claimed cal to the reconcilia- adjustment nice ment for make, use, sell a seeking to petitor pri- interest and public tion between by a con- protected that is protein competing as well as between vate needs limitation will an amended claim taining private claims. particular at a loca- only have to substitute Bowles, 321, 329-30, Hecht Co. interchangeable amino in the chain an (1944) 88 L.Ed. amino acid recited particular for the acid added). Today’s ruling, howev- (emphasis that loca- occupying claim as er, rigid legal upon rule imposes that, thwart in order to appears tion. It equitable would patent applicant copying, such The com- history estoppel. every single to disclose and have flexibility eq- eliminates the plete bar equivalent to the functionally that is analog flexibility, this uity demands. Without vast Considering the protein. claimed pat- protecting from precluded are sequences courts amino acid specific of number to dis- copyists. be forced applicant entees an would mean- in order to secure close and claim Ability Copyists Li- to Avoid of B. invention, I feel for his ingful protection ability Complete Bar Under impossible bur- majority’s puts rule an Particularly in Cer- Be Severe Will applicant and the PTO. on both the den Technology. Types tain of Patentability Amending Claims C. today’s apply able to Copyists will be Practice Reasons Is Common noted fail-safe method ruling, using the Trigger a Com- Not That Should all, if above, many, liability avoid plete Bar. one Biotechnology is technology. areas of magni- of may majority no hint gives be technology critical field from its that will ensue of the effects ruling. tude by today’s harmed particularly majority patent new rule. The vast peals. Such an increase could result in a applications significant contain claims that are initial- lengthening in average time art, ly rejected prior in view of the and are and cost required prosecute applica- being allowed after amended. Patent tion to issuance. process is an iterative in which Furthermore, imposition this court’s of a applicant typically submits claims that complete bar perverse creates a incentive allowable, thought are to be the examiner patent applicants, particularly those rejects art, claims view of the who financially are unable to invoke the and the applicant then amends the claims appeals process, to simply abandon their patentability traverse the examiner’s re- cases, applications. many In may it be See, I, jections. e.g., Hughes at F.2d protect more effective to by an invention (“Amendment U.S.P.Q. at 481 of maintaining it as a trade secret than practice claims is a common in prosecution accepting patent publicize that will patent applications. No reason or war- invention, provide protection but only from rant exists for limiting application of the Tank, literal infringement. See Graver doctrine compara- those (“[Protect- 70 S.Ct. at 856 tively few exactly claims allowed origi- ing against only infringement] literal amended.”). nally filed and never deprive would [the inventor] of the benefit Today’s ruling may prove impractical of his invention and would conceal- foster provides because it that the mere act of inventions, ment rather than disclosure of amendment to traverse a patentability re- which is primary one purposes jection protection eliminates all under the added)). patent system.” (emphasis As equivalents, doctrine of even for equiva- result, public may deprived lents that were not the subject of the teachings useful contained in appli- amendment. This is ill-suited to the itera- simply cations are abandoned after process by tive applications rejection is regarding made a critical claim prosecuted. Wamer-Jenkinson, are limitation. apply prose- Court refused to Today’s Ruling

cution D. estoppel regardless Significantly, Will Unfairly, reason expressly for amendment and Reduce because the Value of Unexpired do so All would “subvert the various bal- Patents That Were Patentability ances” inherent in process rejection Amended for Reasons. followed amendment. 520 U.S. at 32 n. today’s The effect of ruling upon previ- 6, 117 1050 n. 6. In holding that ously-issued unexpired but patents may be any amendment made for patentability dramatic. While I predict cannot all the reasons triggers complete protec- bar to consequences may flow from today’s tion under the equivalents, to- decision, I think it say is safe to that the day’s ruling will “subvert the various bal- majority’s will rule reduce the effective ances” inherent process scope, thus, value, of most of the prosecution. Id. 1,200,000 patents that unexpired are Rather than acquiesce to patentability enforceable. Wholly apart from other rejections thereby surrender all re- long-term rule, effects majority’s course to the doctrine of equivalents, appli- today’s feel that ruling will be unfairly cants will increasingly likely to disruptive file ad- existing of commercial relations. judicial ministrative appeals. Today’s ruling offers no “grandfathering” PTO Board of Patent Appeals and provision Inter- for the vast numbers of unex- already ferences backlogged is and often pired patents that contain amended claim years takes appeal. limitations, decide an Neither and thus that will in- become PTO, court, nor our prepared creasingly susceptible to copying under to- handle significant increase in ap- day’s such new applicants rule. Patent who accordingly I consequences. unintended the rule of a claims under their prosecuted majority’s answer to limited must dissent from protection have will flexible bar estoppel. complete Question 3. by our new rule now complete bar today’s adoption

As applicants these utterly unpredictable, RADER, Judge, concurring-in- Circuit harm that now way to avoid the had no part, dissenting-in-part them. befalls justification A for the doctrine primary ruling might most today’s think I that to accommodate after- equivalents of licens- directly impact untold numbers a doctrine of arising technology. Without predicated are on the ing agreements in current equivalents, any claim drafted an claims with patent assumption easily terms could be circum technological to a are still entitled limitation amended after advent of an advance vented will be Licensees range “an using A claim the terms technology. ruling using the exploit today’s tempted technology from tube ode” and “cathode” copying discussed liability-free method and “emitters” would lack the “collectors” make a minor A could licensee above. technology emerged of transistor interchangeable of a known substitution Thus, equiva a doctrine of without limitation, claim for an amended element lents, infringers in 1949 would have unfet long- it is no correctly claim that and then patented all appropriate tered license licensed— patented practicing er —and “ca technology using the out-dated terms then be would invention. The licensor Fortunately, the doc thode” and “anode”. license because to enforce the powerless accommodates that un equivalents trine of simply claims would amended claim or for claim drafters. foreseeable dilemma newly-modified licensee’s cover Co., Indeed, Inc. v. in Warner-Jenkinson product process. 520 U.S. Hilton Davis Chemical above, Supreme Court As discussed (1997), L.Ed.2d 146 in Warner-Jenkinson specifically refused acknowledged the doc Supreme Court regarding assumptions” “upset the basic after-arising accommodating trine’s role estoppel. See technology. 32, 117 today’s I feel that at 1050. all Unfortunately, by barring assumptions regard upset basic ruling will amended equivalents for of the doctrine of and will patents, ing the effective claims, at all court does not account this relations commercial unfairly disrupt All doctrine. role of the primary for the assumptions. these based on amended claims is protection for after-arising technol- when it comes to lost Conclusion V. will ogy, while the doctrine years hundred face of over one after-arising continue to accommodate law, today’s en banc case For a claims. technology in unamended majority authority to establish lacks disparate than important far more reason majority also rule. The complete bar however, claims, result this treatment of years of un- eighteen abruptly abandons logic. defies precedent as artic- varying Federal Circuit estop- history estoppel is decisions, Prosecution and does so fifty ulated in over Moreover, litigant Estoppel prevents pel doctrine. showing their error. without upon denying an earlier admission complete and auto- imposing believe already relied.* has for which another matic bar to the doctrine (7th ed.1999). patentability limitations amended for BlaCK’s Law DictionaRY law, the admission is adverse, unfair, In the case will have reasons at all on infringer need not have relied "estoppel” varies *This law version prior admission. estoppel an accused because from classical scope regime places greater of claim to new also emphasis surrender applicant’s the Today’s literary rule forfeits patent. inge skill than on an inventor’s acquire nuity; gives unscrupulous of the doctrine copyists free protection all claims, amend their applicants ride on the coattails of legitimate inven whenever of, they tors; in fact surren whether regardless changes the rules which under definition, By applicants coverage. prosecution strategies dered were formulated for something surrendered not have patents longer could thousands of extant no sub at the time of the claim exist ject did not even particularly apt to correction. I find amendment, namely after-arising technolo by here the expressed concerns the Su gy- preme Court in Wamer-Jenkinson when petitioner’s request it considered the for a today that it will not The court reasons bright precluding “recapture” line rule scope of an inquire about any subject part surrendered matter certainty it cannot ascertain because equivalents: under the doctrine of “[t]o Al- scope applicant’s of the surrender. change substantially so the rules of the though premise questionable is for the game very now could well subvert by Judges Michеl and reasons enunciated sought various balances the PTO to strike Linn, beyond question: That thing one issuing patents when the numerous to premise apply after-arising does not yet expired have not and which would be technology. after-arising Because technol- by our affected decision.” Warner-Jen ogy during was not existence kinson Co. Hilton Davis Chem. application process, applicant could not 32 n. it, alone have known of let surrendered it. . (1997) L.Ed.2d 146 Nonetheless, apply the court would an es- toppel where none exists and defeat the In my opinion, approach prosecu- history estoppel by as articulated Supreme Court and long by followed this LINN, Judge, concurring-in- Circuit court should remain long the rule. As as part, dissenting-in-part, which Circuit the reason for an amendment is explained, Judge joins. RADER estoppel by an amendment should bar join majority’s I articulate recapture subject and well- actually matter 4; Questions surrendered, reasoned answers to as discerned from the however, must, respectfully, dissent from amended claim language and the reasons majority Question the answer of the by applicant 3 articulated change. for the III, opinion and from Part Section C mere fact that an amendment to a my opinion, majority’s court. claim pursuant is made to a statutory re- rule, rigid bright eliminating quirement new line all insufficient and of itself to flexibility scope afforded certain conclude that all beyond matter statutory claim limitations amended for a the literal of the amended claim purpose just they surrendered, because were amended language has been even for a statutory purpose, goes too far. The where the amendment is made to over- by expressed majority reasons do come art.

justify policy this dramatic shift. by Both taking expansive view of respect my colleagues

With all due in what constitutes “substantial reason rule, majority, bright the new line relating patentability” apply- simple hoped as it is in application, ing prosecution history estoppel as a wrongfully place sets regime complete bar to reliance on the doc- complexity increases the cost and trine of limitations amendment, to the detriment of individual narrowed majority inventors, start-up companies, unfairly tips away and others the balance pat- unable to bear these increased costs. The entees and competitors by toward con- rights paten- Policy Economic straining legitimate Approach, 67 St. John’s (1993). inventions, 405, L. Rev. to their even where “From in- tees their reasonably ception, patent can the federal laws have em- competitors determine bodied a careful balance the reasons for amendments and the between the need promote innovation and the any subject recognition matter surrendered. view, that imitation and refinement my major through this is an ill-advised imi- necessary tation are both policy compelled that is neither nor to invention it- shift self and justified very competitive at this time. life blood of a Boats,

economy.” Bonito Inc. v. Thunder Boats, Inc., 489 U.S. DISCUSSION Craft (1989). 971, Thus, S.Ct. 103 L.Ed.2d 118 Purpose, System the Patent patent attempt provide laws each Congress The Constitution authorizes inventor with reasonable assurances that promote Progress of ... useful “[t]o the reward to which he or she is entitled Arts, by securing for limited ... Times to will, fact, And, given. these same Right Inventors the exclusive to their ... attempt laws also provide competitors Const, I, 8,§ Discoveries.” U.S. art. cl. with patent notice owner’s rights. foregoing founding 8. The evinces the fa Strong patent protection must accom- both patent thers’ intent that the federal laws justice modate patentee and balance public the United be directed to the States and notice to the public patentee’s purpose fostering prog technological rights. Hilton

ress. See Davis Chem. Co. v. War Inc., ner-Jenkinson F.3d Ordinary Language Claims Use (Fed.Cir. Captwre Concepts 1995) (en banc) (Newman, J., concurring), an protect through To invention grounds, rev’d on other laws, United States an inventor (1997). 137 L.Ed.2d 146 must use “claims.” See 35 U.S.C. (1994).

An right granted by the gov- § exclusive paragraph pur- second ernment has for one’s invention value to an pose requirement give of this notice is and, a guarantee protection, inventor as technology that the patent controls. thus, Indus., stimulates inventors to add to the Mfg. See Co. v. Kinkead Slimfold (“In- (Fed.Cir.1991) knowledge. sum of human Paul See C. 932 F.2d Craane, At The Boundaries Law And patent system herent in our claim-based is Of Equity: Appeals The Couri principle protected For The ... that the inven- Of is, Federal Circuit And The say Doctrine tion is what the claims it and thus Of Ill. Equivalents, 13 N. U.L.Rev. 107- infringement can be avoided avoid- claims.”) To right, ing OS obtain this exclusive the language of the the inventor must disclose his invention to There inventor disputing is no is Thus, public. also free any way to craft claims he sees fit to public value to the because such disclo- “particularly point[ distinctly ] out and sures will stimulate others to add to the elaim[] he] matter re [that sum of human knowledge through the cre- § gards as his invention.” 35 U.S.C. ation of other inventions utilizing the les- However, paragraph. second a claim is a patentee. sons learned See id. at linguistic description concept. of a mental 108-09. Due to the inherent limitations of lan

Strong patent protection key the fit guage, description to en- between the innovation, couraging growth, concept always economic is almost inexact. See competitiveness. and American See Paul Br. for Fed. Bar As Amicus Curiae Cir. Otterstedt, Unwrapping J. File soc. in Wrapper Hilton Davis Chem. Co. Warner -Jenkinson, Inc., Estoppel Appeal In The Federal Circuit: A New No. majority opinion very is clear In addition While the 348 B.J. Cir. Fed. ap line bright new rule that the court’s by the inherent fit caused inexact

to limitations narrowed only to claim plies language itself language, the limitations amendment, like articulate it does not developed at the adequately may be not a it to be “narrow clarity considers what applications typi- patent stages when early original drafting ing” amendment. filed, rapidly in evolv- particularly are cally the writer patent application, of a claim fields. ing research of the in the metes and bounds sets out issues, language foregoing Besides ordinary words in their using vention filings encour- application early patent any special or in sense ascribed sense give laws rise to patent the U.S. aged by description. in the written words those crafting a claim difficulties additional amends the terms claim drafter When the subject points out particularly claims, that as original such used in the his regards inventor as matter that adjective choosing different adding an rapidly used, inventions in evolv- changes For such originally than invention. word fields, distinctly point are often application filings to more out ing will serve ordinarily, inventions are still their is the invention which made while signify differ i.e., inevitably, will early though stages, the evolution- not nascent coverage. If the in intended claim ence necessitating inevitable process, ary of one merely the substitution change is tuning of fine considerable sometimes or the mere synonymous word for another application after the initial language claim foreign language from a clarification Moreover, while made. filings have been translation, may intend the claim drafter aware of relevant an inventor is often scope; in claim but change no whatsoever developing, area he is relating art may con word choice be the drafter’s cognizant of all of the always fully he is imply a grant of the strued after until prior art after his relevant changes because scope simply different filed, again necessitating thus has been merely for language claim are not made tuning language of claim after fine some However, just aesthetic reasons. because application filing initial has been made. amends claim limita the claim drafter foregoing, it consequence As tion, he “intends” to narrow does not mean quite for claim drafters draft difficult coverage give claim or to of his adequately and accurate claims that initial beyond matter literal up all day “invention” on the ly cover the language. amended The scope of the Consequently, filed. patent application is draw from mere inference one should commonly during are amended claims that an amendment was made is fact alone particularly point more out prosecution to that the drafter “intends” the claim regarded distinctly Beaton, K. File to be issued. See Glenn Corp. invention. See Loctite v. Estoppel And The Federal Cir Wrapper be (1991) Ltd., 861, 871, cuit, 228 286 Ultraseal 68 Denv. U.L.Rev. (Fed.Cir.1985) “in (noting (noting patentee presumably U.S.P.Q. 96 promoting the tends” that his reward for few claims are allowed ex comparatively great arts be as as filed), progress of useful on other actly originally as overruled to his reward that the limits possible and Implant v. grounds by Nobelpharma AB possible). as Innovations, Inc., be small F.3d (Fed.Cir.1998); U.S.P.Q.2d Hughes Equivalents: Doctrine of States, 717 F.2d Co. v. United Aircraft Equity Borne of (Fed.Cir. 1351, 1363, U.S.P.Q. Inc.,

1983); Inc., Sys. Honeywell, “That of a Litton the claims should and should control the determination F.3d clear (Fed.Cir.1998). emphasized by has been infringement century.” Biotechnology Court for over a Emerging and Other Chisum, Scope Donald Protec- Technologies, S. Rutgers Computer & Of The Supreme (1992) tion For Patents Tech. L. (providing J. 6-16 After Warner-Jenkinson Decision: The Count’s origin definitive discussion of the Conundrum, Protection-Certainty Fair doctrine of equivalents); Donald R. Dun- Computer High& Tech. L. J. Santa Clara Jakes, ner & Equitable J. Michael (1998) Chisum, (citing 5 Donald S. Doctrine Equivalents, 75 J. Pat. & of Patents, (1997)); § on 8.02[3] Chisum (1993) Soc’y Trademark Off. Yeomans, 568, 573-74, Merrill v. 94 U.S. (“[T]he equivalents doctrine of did not (1876) (“[N]othing L.Ed. 235 can be originate strictly way as a to catch infring- fair, just patentee more and both to the ers language who avoided the literal of public, and to the than that the former equiva- [since claims the doctrine of understand, describe, should correctly and long lents dates back before peripheral just what he invented and for what has he claiming]. The primarily doctrine was an Nevertheless, patent.”) claims a the Su- one, equitable to applied against copy- be preme recognized Court has that “strict ists who made slight changes in the and literal adherence to the written claim invention.”); form of the but see Robert P. determining protection in the scope [to of Taylor Callahan, and T. Celine The Doc- patentee] afford to a can invite subversion trine Equivalents Hilton Davis: of After right substantially of a valuable dimin- Questions, Many Unansivered 489 PLI/ ish the economic value of patents.” Chi- (1997) (noting Pat 26-27 that the Su- sum, supra, (citing at 6 Chisum on Pat- preme Court in ap- Warner-Jenkinson ents, 18.02); § supra, see also Graver pears to have held that the doctrine Mfg. Tank & Co. v. Linde Air Prods. equivalents equity). is not doctrine of 94 L.Ed. generally agreed While it is that words, system other doctrine of at the stands inter- patentees for limited protection to literal justice patentee section of to the and no- infringement subjects patentee to the mercy competitors patentee’s tice to rights, of verbalism and convert the “would protection patent grant into a hollow United States law embraces Tank, and useless thing.” provide Graver 339 this conflict to an inventor with at U.S. 70 S.Ct. 854. security in patent rights granted by technological the law and to stimulate Thus, temper unsparing logic and “[t]o Tank, progress. Graver at See prevent infringer stealing the ben- (noting subjecting that S.Ct. 854 thereby efit of the invention” and ensure mercy the inventor to the verbalism would that the patent grant is not converted into deprive the inventor of his invention and thing by being a useless to the would foster concealment rather than dis- mercy verbalism, invention); closure of see also Hilton embraced the equivalents. Id. Davis, 1531, U.S.P.Q.2d 62 F.3d at at (quoting Judge 70 S.Ct. 854 (Newman, J., concurring) (noting Learned Hand in Royal Typewriter Co. v. dependence industry technology, on Rand, Remington (2d.Cir.1948)). opportunity rely to reduced trade This doctrine was borne of secrecy today’s enlarged analyt- because of equity justice to allow room for capability, speed ical the ease of imita- patentee against manage who those tion and modification once the innovator avoid the letter of the invention itas was way, harshness of mod- has shown through “unimpor- claimed competition, ever-present tant ern and the need changes.” and insubstantial Id. at 854; incentives are factors that Wegner, Harold C. industrial see Equitable Equivalents: Weighing tempers rigor favor a Eq- rule (not- literalness); Infringement supra, uities to Determine Patent at 31-32 Wegner, bright appli- can line rule. It ‍​‌​​‌‌‌​‌​‌​​​​‌​​​‌‌​​‌​​​‌​​‌‌‌​‌​​‌‌‌​​‌​‌​‌‌‍will also deter ing “[p]atent protection attempting expedite prosecu- is antithetical to build- cants from easily circumvented making strong early research-based industrial and attain allowance ing a clarifying technology”). minor or amendments claims, anticipation the initial either problems regarding noted above subsequent during times office action or language and the inherent limitations of a com- prosecution, triggering for fear of filing applications pro- have early stage of on the doctrine plete bar to later reliance justification lengthy vided for the pro- This will result the doctrine applying in- dramatically tracted language adequately protect claim all many applications. costs creased invention, right to his de- patentee’s complexity These increases costs and public notice function the spite the greater at a will also come time when majority’s Even terms serve. may investments be hard for rule, pro- concepts these continue to new many applicants justify to because the justification application for the of the vide commercial value of the inventions covered claim equivalents original doctrine of to fully my In may apparent. not then be language. view, detrimentally impact this will most majority’s bright my opinion, In new start-up compa- individual inventors and eliminating flexibility rule all line nies, may impeding, have the effect of claim limitations amended for a scope of advancing, technological progress, not con- statutory unjustified reflects an purpose trary patent system. to the of the purpose draftsperson language faith in the to select perfectly to a new and unobvious describe on the Wamer-Jenkinson’s Effect early stage develop- invention at an of the Equivalents Doctrine of process. ment The same limitations of selecting in words to de- language noted majority that agree While with the an invention in the first instance are scribe avail question scope present selecting no words to avoid less a claim able to element has been rejection original an examiner’s of that patentability amended for a known reason language statutory for one reason or an- directly addressed Wamer- other. Jenkinson, Supreme did discuss Court Furthermore, majority’s rule the fact that an to a claim new amendment substantially necessarily preclude will in increase cost ob- element “does not taining patent protection, may fringement by equivalents in fact of that element.” er-Jenkinson, prohibitively high become for individual Warn start-up companies. fact, It inventors will 117 S.Ct. 1040. where the require to applicants undertake exhaustive record reveals a reason for the claim searches, amendment, pre-filing which will not noted that be Court those It costly consuming. may but also time will “reasons for a claim amendment avoid require applicants original also to file in an application prosecution history estop- or, addition, application numerous claims Id. In pel.” recognized “narrow” the Court if sought, prosecution history claims are to be that whether or not pre- “broad” pared examiner, argue depend upon to to the to is avoided will appeals, (right wrong) the board of and to court or for the [examin this “reason impropriety rejections patentabil- rejection being of all for of the claim er’s its reasons, ity rather than to amend those and the manner which the amended] claims, given avoided that consequences the harsh amendment addressed and [rejection].” n. majority’s amendments under new Id. at 33 S.Ct. 1040.1 change avoiding 1. While it trae to a is that footnote was directed made relative stating After the rea- that was made specifically for unknown reason claim amendment are relevant necessarily sons presupposes the possibility any subsequent application prosecu- that no estoppel apply will where the rea- history estoppel appli- as a bar to the known, son for the amendment equivalents, cation of the doctrine of see id. where the presumption is rebutted. 117 S.Ct. the Court noted petitioner argued Supreme

that the definitional and notice functions Court Wamer-Jenkinson that “any sur- the claims require patentee estab- render of during patent matter lish a for an reason amendment order to prosecution, regardless of the reason for estoppel, avoid the see id. at surrender, precludes such recapturing any reason, In the absence of a part subject matter, of that even if it is explained Court that “prosecution history equivalent to the matter expressly еstoppel would bar claimed.” Id. at 117 S.Ct. 1040. The element,” as to that rejected argument. it would presumed because See id. I think it fair to conclude that limiting element added amendment was Wamer-Jenkinson long reaffirmed the patenta- substantial reason related to standing principle applied by this court bility. Id. The Court determined that today before that to determine the fashion, “[ajpplied in this his- prosecution history estoppel, any, if tory estoppel places reasonable limits on applied amended claim limitation the equivalents, and further file, with reasons in extant the the any insulates doctrine from feared con- one must look to the exchange between the flict with the Patent Act.” Id. at examiner and the in patentee prosecu- the S.Ct. 1040. tion file to determine which was sur- If equivalents the doctrine of is com- by patentee rendered in making the the pletely barred when no reason for an amendment.2 amendment can be discerned from the rule, In applying majority’s the new prosecution history, and it is likewise explore court does not the exchange that completely barred when a. reason is stat- ed, occurred between the examiner and the what point exploring is the the patentee during pat- the (right “reason or wrong) for the [examin- ent rejection paten- er’s the to elucidate the construction the prior claim to its be- Thus, ing majori- in tee intended to disavow. the amended] and the manner rule, ty’s invoking complete estoppel the amendment addressed and avoided new [rejection?]” flexibility narrowing Id. at 33 n. with no for a S.Ct. amend- Thus, adoption 1040. of a pre- statutory purpose, rebuttable ment made for a effec- sumption tively disregards for an amendment the “reason” for art, 1984). prior presumably (citing Bayer the same Cir. methodol See id. at 30 as a ogy apply was meant to to claims amended case that sets forth the "well-established limit reasons, for other since the Court set forth the infringement, variously on non-literal known methodology just stating body after 'prosecution history estoppel' as and ‘file opinion: the reason for the "[w]here "). wrapper estoppel.' Bayer, In our court change avoiding [claim] was not related to stated: "whenever the doctrine of file art, change] [the ... does not necessari invoked, estoppel is a close examination must ly preclude infringement by equivalents of to, be made as what was surren Warner-Jenkinson, that element.” 520 U.S. at dered, but also reason for such a surren 33, 117 S.Ct. 1040. der. The fact that claims were narrowed always does not mean that the doctrine of file by 2. This conclusion is further buttressed history estoppel completely paten- prohibits a thinking prosecution history fact that in about recapturing origi tee from some of what was estoppel, Court in Wamer-Jenkinson had nally Bayer, claimed.” 738 F.2d at Bayer in mind the doctrine set forth in U.S.P.Q. at 653. Aktiengesellschaft Duphar Int’l Research U.S.P.Q. B.V., (Fed. appli- commentary between stantive of Wamer-Jen- in contravention change, any of regarding the examiner cant and kinson. limitations, drafted claim originally Policy Public and mean- no notice of provide limitations beyond the words ing of those that the disclaim- majority contends The descrip- used in the written themselves as function, and the need effect, the notice er Thus, ways, and claims. some supporting are law certainty for may function be better public-notice rule re- strict for its new public policies language by explained amended served maj. op. See limitations. garding amended claim lan- by unexplained original than asserts that majority at 573-74. rule favors yet majority’s new guage, any reason related claim for amending a by leaving the doctrine the latter obtaining statutory requirement limita- unrestrained for claim equivalents subject mat- disclaims patent, patentee that are not amended. tions original claim. by the encompassed ter disclaimer, majority con- view of this noted Warner- As Court strictly construed tends that it must be Jenkinson, lengthy history of the doc “the public, in favor of the the inventor against strongly supports trine of as to of the doubt otherwise the benefit [by Court] refusal [the] adherence public’s at the' what was disclaimed comes that the Patent Act ] Tank to find [Graver But the same id. at 573-74. expense. See can Congress that doctrine. conflicts with originally filed can be made arguments out legislate the doctrine which, limitations, like amended claim it chooses.” Warner existence time limitations, of cer- a disclaimer are -Jenkinson, 28, 117 520 U.S. at tain matter. policy specifically noted that the eliminat previously, arguments justify keeping U.S.C. As mentioned requires § are best addressed paragraph, ing the doctrine second inven- Congress, claim the not the Court. See id. Since patentee specifically the purpose opin The by patent. the the issuance of the Court’s tion covered Warner-Jenkinson, notify Congress to the has statutory requirement ion in this forbidden to eliminate the doctrine of public scope of the conduct not chosen lim- entirely, whether a and I do by applicable equivalents partially the is or by ap- the originally presented province not believe it is the of this court itation is by for amendment plicant partially legislate or added to out existence limitations; statutory re- to one of the for amended claim reason related doctrine patent. The quirements obtaining particularly compelling for in the absence of a why a new majority explain justification treating does not amended claim strictly to bright compelled language differently original line rule is than in the inventor’s choice of words language. construe similarly not com-

amendments but is Promoting Promoting Free Riders clаim limitations. Cer- pelled original Progress Arts tainly, of the doubt as to what the benefit Useful ex- public’s comes was disclaimed certainty majority The contends case. pense either by complete to provided approach bar meaning “will stimulate invest- Paradoxically, scope and amended limitations improvements design-arounds may easily be more ment of claim limitations limitations, will infringement as the risk of for amended because discerned Maj. at 575. op. claim easier to determine.” originally with drafted compared However, limitations, developed my opinion, limiting pat- on the record based only the literal lan- protection to during First-action allow- entee prosecution. claim limitation is ances, guage or of an amended interchange no real sub- with likely promote progress patent system any patent to of the system was Rather, majority’s new useful arts. intended to work. Patent laws seek to rule, by bright constraining genius, line limitations benefit the inventor’s not the scriv- statutory for a to their purpose amended ener’s talents. See id. majority’s The terms, rule, likely encourage is to insub- literal new which sanctions the behavior of changes product, copyist stantial to an established who avoids the letter of the in break-through rather than investment nothing claims and adds to' the technology, rule, technological likely advancements. Such a is to be a disincentive for inventors therefore, promotes riding free and under- to bear the commercial risk in developing investment, a patentee’s cuts the return on and disclosing technology. new words, majority’s

In other majority’s new rule regarding concern cer- unscrupulous tainty hands the copyist free ride is that under our previous precedent potentially valuable patented technolo- had spectrum gy, long copyist merely as the follows of coverage and there no precise met- prosecution history map road and ric to determine the exact range equiva- change, makes a no matter how trivial or spectrum. maj. lents within that op. See insubstantial, an element otherwise cov- at 575. This concern regarding pub- ered such a narrowed claim ability limitation. lic’s to know what is and what is not Every other detail of the patented inven- within the of a patent monopoly confines may be imitated impunity. with Such not a new one. “unscrupulous copyist” appropriates the Denmead3, The dissents in Winans v. avoiding substance of the invention while (15 How.) 330, (1853), 14 L.Ed. 717 claims, yet nothing the letter of the adds strongly disagreed Graver Tank4 technology. copyist, trans- respective majority’s their liberal view to- competitor, formed as a lawful can take wards infringement equivalence, feeling refuge the excuse that if the patentee interpret the language pat- coverage, wanted better the claims should ent to include would under- prosecuted have been competently. more claiming system destroy mine the predecessor

As our court aptly public’s ability rely stated: on the claim- literality satisfy ing system “[t]o allow the test for mark grant- the boundaries infringement Craane, would force law patentee. to ed to the supra, See literary However, reward skill and not mechanical 134-35. it noteworthy creativity.” Autogiro Co. Am. v. in forebodings expressed United the Winans of States, 55, 391, 181 Ct.Cl. 384 F.2d 399 and Graver Tank regarding dissents I think impediment do not is how our growth to economic have not law, patentee obliged, by expected 3. "The is ... to ness than could be from faithful particularly 'specify point' and out what he congressionally observance of enacted [sic], claims as his invention. Fullness clear- plan protect against judicial lo business ex- ness, exactness, preciseness, particularity, and pansion precise patent of a claims. Hereafter invention, description princi- in the of the its rely manufacturer cannot on what the lan- invented, ple, and of the matter claimed to be able, guage patent a must be at of claims. He Congress will alone [sic] fulfill the demands of peril heavy infringement damages, country. Nothing, or the wants of the administration of this in the relatively forecast how far a court unversed in law, will be more mis- particular technological expand a field will chievous, productive oppressive more and language considering the claim's after the tes- costly litigation, pre- unjust of exorbitant and timony experts of technical in that field. To demands, and tensions vexatious more [sic] enterprise assumption burden business labor, injurious to than a of these relaxation possess prescience that men such a bodes ill salutary requisitions wise and of the act of Winans, Congress.” (Camp- competitive economy for the kind that is 56 U.S. at 347 J., bell, Tank, dissenting). professed goal” our U.S. Graver (Black, 339 617, J., dissenting). at 70 S.Ct. 854 ruling today stage 4. "The Court's sets the 'piracy' against more ‘fraud’ and busi- 628 has claim and what been scope of the still abounds Competition realized.

been However, fact that technology has the mere and surrendered. marketplace brighter rate. a line for at a remarkable new rule is progressed this court’s is es- determining patentee whether a Subject Matter Surrendered asserting infringement topped from justification for cannot be equivalents, instructs prior precedent Our substantially a rule that so adopting types may be of different “amendments game and dis- the rules of changes functions. De may different serve treating in more intrinsic worth an counts the purpose on the nature pending inventor whose amendment, may limiting fairly have a effect the individual it great scrutiny ranging under administrative spectrum right within may may effect subject to zero. The inherent limitations small range equiva application fatal in Court War- language. The encompass pаrtic enough broad lents no “substantial cause ner-Jenkinson saw It is not fatal to product. ular accused invoking rule requiring rigid a more itself.” doctrine no flexi- complete bar with estoppel [as F.2d at 1363. For at least Hughes, 717 of the reason for bility] regardless years, beginning with past seventeen Warner-Jenkinson, 520 change.” Hughes, have con our seminal case we Likewise, I find that sistently prosecution held that es- lacks substantial majority’s opinion by equivalents by infringement toppel bars rule. rigid cause for its manifest intent to patentee’s reason of the majority approach contends that the a construction of the disavow or abandon v. followed our court Kinzenbaw as a condition of the patent claim Co., U.S.P.Q. F.2d 222 Deere & 741 Bayer, 738 F.2d grant. See (Fed.Cir.1984), is different than Loctite, 653; F.2d at U.S.P.Q. at Hughes approach espoused flexible bar 96; Studs, U.S.P.Q. at Inc. v. Sun progeny. disagree. and its I Kinzen- Inc., Leasing, ATA 872 F.2d Equip. baw our court examined the (Fed.Cir. U.S.P.Q.2d noted that whether or not the record and 1989); Mktg. Corp. v. R.R. Don Mark specify the radius of patentee needed nelley & Sons rejection 1095, 1100(Fed.Cir.1995); to overcome the gauge wheel Sex Devices, art, Analog specified prior claims over he Avionique, tant S.A. Kinzenbaw, 817, 830-32, U.S.P.Q.2d just F.3d did in fact do that. (Fed.Cir.1999). Moreover, U.S.P.Q. we After 1870-72 F.2d at at 932-33. construc record, have instructed that the intended analysis our de tion that has been disavowed is to be competi- court also noted that a reasonable objective termined from an evaluation patentee had tor would believe examiner and exchange .between surrendered the relevant matter prosecu patentee occurred showed “explicitly view of the file which history, explicit implicit. whether or rejec- response to the examiner’s that in tion, to inventor] narrowed his claims [the agree I the extent to which the planter in ‘the radius of wheel patentee deprived would be ” ... radius of the disc.’ less than the [is] according precedent necessari- past to our words, position this court’s Id. In other ly task of re- involves the often arduous prosecution that when the record was complex prosecution viewing difficult and manifest- objectively, patentee viewed histories, complex difficult and as well as anything but an intention to disavow ed diffi- technologies. agree I also these gauge radius of the relationship culties may give differing opinions rise to of the discs to obtain subject as to what is within the wheel to the radius matter Office, even it is a trivial Restricting his from the Patent matter. such an necessary. have claim though might it not been amended limitation to its literal scope unfairly penalize would patent own- foregoing split does not evince beyond ers necessary what is provide to comports with precedent, our but rather certainty notice and competitors. to As Hughes that courts must undertake an long as the reason for an amendment is examination of the record to explained, competitor and a can reasonably subject patentee matter the determine the subject determine what appli- matter the amendment, by disavowed whether or not surrendered, cant prosecution history es- patentee contends the amendment was toppel preclude should holder necessary obtaining patent. As this recapturing only from the surrendered “[ujnmistakable court has stated: asser- matter, accessing from the doc- ... by applicant tions made to the equivalents entirely. view, trine of In my ... support patentability, PTO approach flexible best balances fair- required or not to secure allow- whether ness to with certainty compet- inventors claim, may operate ance of the ... itors and appropriate strikes an accord asserting preclude patentee required between rewards for the al- equivalency....” Texas Instruments Inc. ready expensive lengthy process Comm’n, v. United States Int’l Trade innovation, and the extra public costs of F.2d Otterstedt, monopoly profits. (Fed.Cir.1993). supra, See patentee’s subjective at 424. of whether or not an amend- determination

ment would have been needed to secure allowance of a claim is If an irrelevant. CONCLUSION unmistakable assertion made was applicant the Patent Office to obtain commonly Because claims are amended patent, allowance of the as viewed from during prosecution, prosecution history es- objective standpoint of a reasonable toppel every touches almost competitor, then the infringement analysis. See history estoppel is zero. Kinzenbaio is a Loctite, U.S.P.Q. 781 F.2d at emphasizes patentee case that that a can- Although complete pro- would bar not take position one before the Patent bright vide line enhancement of the notice allowed, get Office to his whether claims, unfairly subjects function of it al- not, position necessary every patentee mercy most of ver- position then assert different court to early stage development. balism at an prove infringement. Tank, See Graver promote 854. Rather than above, technological explained

As I it believe is fair to growth, majority’s rigid new rule will conclude that the Supreme Court War- patentee’s effect serious invasion of the principle ner-Jenkinson left intact the security receiving the full benefit of determining patentee that which the sur- his likely invention by looking rendered at the and is to be a disincentive exchange be- early tween the examiner disclosure of new patentee and the re- inventions and prosecution history. corded in the I Some discoveries. see no substantial cause for may statutory action, must, amendments majority’s be made for a drastic reason, providing proper such as respectfully, anteced- from the pronounce- dissent basis, required by ent which is 35 U.S.C. ment that time a claim limitation is § paragraph’s second requirement any statutory narrowed amendment for the applicant particularly point purpose, regardless out of the nature and ex- distinctly and claim that regarded change, prosecution history which is tent óf the es- However, as the invention. toppel completely application while such an bars the amendment patent, affects issuance of the the doctrine of majority does not reach the second NEWMAN, Judge, The Circuit

PAULINE issue, of the all- application remand dissenting part. concurring part, However, the all-elements elements rule. Federal Cir- appeal returns This Supreme Court’s rale is central to Court,1 Supreme from the cuit on GVR between the doc- treatment of the tension our to reconsider with instructions func- equivalents and the “notice trine of the law an- in accordance with decision Although my col- claims. tion” Co. v. Hil- nounced Warner-Jenkinson majority identify the “notice leagues in the 520 U.S. Davis Chemical ton their new and as the reason for function” L.Ed.2d S.Ct. on the doctrine of extreme restraints (1997). pre- major issues are Two opinion neither majority equivalents, (1) ap- on remand: for our review sented acknowledges nor the Court’s discusses new rebuttable of the Court’s plication actions reinforce the notice considered to any ensuing estoppel and presumption function. and Stoll of Festo’s Carroll the claims majority ignores the bases of Thus the (2) of the all- and patents; us, which returned this case to the GVR sealing rings of the rule to the elements the issues manipulates and instead magnet- patents and and the Carroll Stoll poli- to achieve a equivalency patent. izable sleeve of the Stoll severely cy-driven acting result. issue, today’s ma- For the first remand court equivalents, limit the doctrine of this holdings from the jority opinion departs change in the rela- has made deliberate important in three Warner-Jenkinson competi- innovator and tionship between First, majority that all ways. holds reject- Although Supreme tor. Court any ele- equivalency is barred as to arena, judicial entry policy ed into this for rea- ment that is narrowed or added majority headlong, criticizing has entered patentability; access to relating sons years precedent the doctrine of is barred as years precedent of Federal Circuit whether or not the Court’s new rebuttable judicial spontaneous “unworkable.” This or not it presumption arises and whether represents action a venture into industrial Second, majority denies is rebutted. have inad- policy consequences whose been consideration to rebuttal evidence that equately majority’s considered. The an- record, already is not in the purpose facilitating competition nounced thereby converting pre- the rebuttable by restricting patentees’ access to the doc- Third, into an irrebuttable fiat. sumption evaluated trine of has not been majority’s inappropriately broad defi- technology- for its effect on the nation’s patentability” nition of “reasons related to industry, system based for its effect on patentee’s equiv- incentive, further limits access an innovation patents alency, and the conflict with exacerbates competition. indeed for effect on The its holdings technolog- of Wamer-Jenkinson. interdependent policy aspects of negate by equiva- innovation, infringement growth, result is to ic and com- industrial lents, law, briefed, thereby providing as a matter of not in- petition were not and do blueprint ready patented “special expertise” imitation of here in court’s this adjudication products. patent disputes. K., given Corp., reject opportunity if for further con-

1. Shoketsu K. Ltd. v. Festo Kinzoku Chater, 137 L.Ed.2d sideration.” Lawrence v. (1997). sequence 133 L.Ed.2d 545 of events called vacate, remand) (grant, courts to "GVR” occurs It is mandate to the lower intervening developments “intervening developments apply ... when reveal probability appeal, "to ensure the fairness and reasonable that the decision below case on accuracy judicial premise rests on a would outcomes.” Id. that the lower court claim, that did not necessarily pre- clude the application of the doctrine of THE CONFLICTS WITH LAW OF to that element. WARNER-JENKINSON Id. 32, 520 U.S. 117 S.Ct. History Estoppel Prosecution U.S.P.Q.2d at 1872. majority’s The new in Wamer-Jenkinson The Court con- rules would bar the inquiry for which the precedent firmed its that estoppel flows Court remanded Wamer-Jenkinson to the from a applicant’s disclaimer or sur- Federal Circuit. subject render of matter for reasons of The Court in Wamer-Jenkinson reaf- patentability; precedent has never held precedent firmed its patentee wherein the that no equivalency whatsoever is availablé estopped reaching, through equiva- majori- to amended claim elements. The lency, subject matter the applicant ty’s departures from this law are summa- had disclaimed or surrendered in order to in rulings rized its that “an amendment See, e.g., patent. obtain the Sup- Exhibit narrows the of a claim for ply Corp., Co. v. Ace Patents 315 U.S. statutory require- reason related to the (1942) 62 S.Ct. 86 L.Ed. 736 a patent give prose- ments for will rise to (the patentee had by “surrendered amend- cution estoppel respect ment,” “proclaimed his abandonment of’ element,” maj. amended claim op. at subject and “disclaimed” the matter that range that “no is available by was used Smith infringer); the accused element,” id., for the amended Magic Club, Inc., City Kennel 282 U.S. that amendments made to comply with 784, 790, (1931) S.Ct. L.Ed. 707

virtually any provision of the Patent Act (describing an amendment per- made after id. at 566-67. will raise estoppel, this rejection sistent examiner’s as a “disclaim- rulings These contravene the Court’s hold- er”); Weber Electric v. E.H. Co. Freeman ings Wamer-Jenkinson. Electric In Wamer-Jenkinson sum (1921) (“it 600, 65 L.Ed. 1162 is clear that marily argument “any dismissed the the chief concern of the applicant [after subject surrender of during patent matter rejection] to distinguish his construc- prosecution, regardless of the reason for Kenny, tion from that of very which is surrender, precludes such recapturing any similar to infringer]”). [that the accused matter, part subject of that if it even cases, although These mentioned equivalent expressly the matter majority opinion, do not the ma- support Warner-Jenkinson, claimed.” 520 U.S. at rules, jority’s new for in no case did the 137 L.Ed.2d Court find an estoppel as to matter U.S.P.Q.2d at Court held that that was not surrendered in order to ob- Davis, patentee upon Hilton establish tain the and that was not embraced ing why the reason applicant amended the prior difference between art and to include a pH claims lower limit of the applicant’s invention. 6.0,” “approximately may be entitled to prove equivalency pH between a of 5.0 and majority prosecution history recasts approximately process 6.0 of that in a legally equita- incorrect and Observing invention. that it was unclear unjust bly manner. As illustrated why pH limit of 6.0 had been added to suit, patents equiva- Carroll and Stoll claims, the Court ruled that inclusion lents are now held forfeited whether or not necessarily of this limitation did not pre amended, the claimed element itself was a finding infringement clude based discussed, during prosecution. even equivalency: contrast, consistently held Court has 6.0,

[W]hile a lower limit of mere estoppel requires its that the law of determi- inclusion, why, became a material element of nation of what was surrendered and

632 (“a seeking Maj. patent holder by op. at 586 made by representations the measured amendment the for an to establish reason patent. in to obtain the order applicant the solely upon the arguments history estop- must base his prosecution toas Precedent only patent’s prosecution, the of the public uniform in not record strikingly pel is law, history”). ie., but in its patent’s prosecution of the the judicial statement grounds- majority been no that the rebutta- There has Thus the holds application. judicial for unpredictable concerning the reason presumption of concern well ble estoppel, amendment, rules of even arises presumption of the expressed concern for those who have silent as to by the record is prosecution when juries the application by amendment, unpredictable can not be the the reason for im- Today’s actions equivalency. pros rules of outside of the rebutted with evidence estoppel against equiva- an absolute posing presump record. The rebuttable ecution sharpening the criteria lency irrebuttable, because thereby becomes —instead (as the determining equivalency Court necessarily is silent prosecution record instructed) magnitude manifest the at all. to arise presumption in order for the —make in the law. majority’s change surely of rebuttal was impossibility This creating by the Court Presumption contemplated not The Rebuttable described, one have presumption we “[t]he reinforcement of the notice part As of its appropriate if an reason to rebuttal claims, function of the Court established is estab amendment required for a presumption. accor new rebuttable ” Warner-Jenkinson, 520 U.S. lished .... when the presumption, with this dance U.S.P.Q.2d at at S.Ct. to the rea record is silent as prosecution 1873. claims, change pre to the son for change that the was made sumption arises is that it is presumption The nature of a patent-ability.” for “a substantial reason related it grounds on the on which not sacrosanct -Jenkinson, at arose, by can countered evidence. but be Warner 33, at 1873. (“a im- presumption See Fed.R.Evid. ensuing estop- presumption This new whom it is poses party against on the pel carefully designed are controls with going forward directed burden “reasoning be require consideration presump- to rebut or meet the evidence upon Patent insistence tion”). hind the Office’s ex- presumption procedural A is Id. at change the claims.” S.Ct. law or whereby a conclusion of pedient 1040, U.S.P.Q.2d at 1872. The Court upon ultimate fact is deemed established does not arise recognized evidentiary proof of certain or histori- every change, depends but on wheth may rebut opposing party cal facts. An change patentability was made for er presumption by coming forward reasons: negate sufficient to the conclusion evidence change generally the reason for the premises.

Where or its factual See art, Miller, avoiding R. Wright not related to Alan & Arthur Charles element, may § a new change introduce Practice and Procedure Federal (3d ed.1998). in- necessarily preclude majority’s ruling it does not con- but The fringement by equivalents of that ele- grounds presumption fuses the on which a it grounds ment. with the on which arises prose- subject to rebuttal. The role may then come forward patentee Id. The record is to establish whether cution presumption. to rebut with evidence all, whether it presumption arises at 1040, U.S.P.Q.2d Id. has been rebutted. ruling makes rebut- majority’s That the majority presumption holds that the patents impossible tal is illustrated can rebutted evidence of its explanation Festo’s already record. suit. Since present amendment Carroll claims is now observed that there are “a vari- record, the pre- ety limited of other why reasons may PTO sumption cаn not be rebutted because request change language” with- prosecution record is silent as to the rea- out producing 31, an at estoppel, U.S. Indeed, for son the amendment. since 117 U.S.P.Q.2d S.Ct. at cit- requirement patent ap- there is no that a ing the amicus curiae brief of the United plicant explain amendments made before The pointed States. United States had out rejection an examiner’s on the merits —the that amendments “to reflect the of situation for both the Carroll and Stoll what was enabled or to add specificity patents explaining such amend- raise considerations different from those —evidence normally present ments is not in the pros- raised amendments to avoid prior art.” ecution record. Brief for United States Amicus Curiae as 1996 WL *22-*23. The explicit

The Court was Court endorsed this understanding of es- presumption “The we have described [is] toppel, rebuttal_” explaining: to 520 U.S. at prior Our cases consistently ap- have U.S.P.Q.2d

117 S.Ct. at 1873. plied prosecution history estoppel only majority’s denial The of rebuttal evidence where claims have amended for been outside the equally record is reasons, limited set of and we see no with explicit, consequence that the sub- substantial cause for requiring a more ject matter unexplained of amendments rigid rule invoking estoppel regard- range equivalents.” can receive “no less of the reasons a change. Maj. op. at 568. in imple- The error this the Wamer- mentation is made in clear 520 U.S. at 117 S.Ct.

Jenkinson case itself. In Wamer-Jenkin- at 1872. son the Court observed “the record emphasis The Court’s on a “limited set seems not to reveal the reason” for the in striking of reasons” is contrast limit, setting amendment the lower pH unconstrained estoppel established patentee has burden of estab- majority any change made in connec- reason, lishing the and that “respondent with any provision of the Patent Act. proffered not has this Court a reason In Warner-Jenkinson the Court unequivo- for the pH addition of a limit.” lower cally rejected position, stating this that the Court therefore remanded the Federal “reaches far in petitioner arguing too Circuit for determination whether the the reason for an during pat- amendment patentee could establish reason for this ent is irrelevant to subse- amendment. regime Under estab- estoppel.” 520 quent by the majority lished opinion, Court’s 1040, U.S.P.Q.2d at 1867. The Court remand would pointless. The Court petitioner’s “That might pro- stated: rule similarly remanded the Festo case now brighter determining vide line for wheth- obligation before us. Our implement is to a patentee estopped er is under certain terms, remand with accordance its is not a circumstances sufficient reason for determine Festo can whether rebut adopting such a rule.” Id. at 32 n. the presumption that the claims were 1040, U.S.P.Q.2d at 1872 n. 6. The changed patentabil- for a reason related majority adopts rejected position. now this ity. Supreme Court and Federal Circuit Patentability” “Reasons Related to that, recognized pros- have well precedent Warner-Jenkinson the Court ex- ecution flows plained that made for “a sub- grounds amendments amendments on substantive stantial reason related to patentability” patentability. principal statutory pro- means amendments made to pat- establish during visions involved examination for entability in rejections. § view of patentability substantive are 35 U.S.C. 102 and At one factual estoppel. cumstances may give § 112 also rise 103; parts

§ a patentee’s that illustrate However, rejection pole are cases every not estoppel. disclaimer, precisely during prosecution, Act is concerned Patent on the based infringer doing. as Such patentability, the accused grounds what substantive judicial An illustration recognized. inspire righteous also the Court cases tend rejected claims, were patentees; over-reaching the Stoll against rhetoric improper being art but majority voice what opinions these form, provi- another dependent multiple to the doctrine approach terms “strict” 112; § claims amended Stoll’s sion of pole factual At the other are rejection ground this response to majority classifies as the that the are cases the doc- from access to today held barred majority’s disap- approach, “flexible” trine of decisions where term for those proving found. equivalency “unworkable,” liability based as majority discards The 575, body precedent vast of maj. op. at not two dis- jurisprudence reflects This of the ex that determination which holds authority, but conflicting parate lines of of consideration estoppel requires tent of findings equiva- of rulings estoppel of See, e.g., for the amendment. the reason situations, of lency vel non a continuum Int’l Aktiengesellschaft Duphar Bayer liability clearly that warranted from those 1237, B.V., U.S.P.Q. 222 F.2d 738 Research inappro- It clearly that did not. to those (cited Wamer-Jenkinson) (1984) 649 of this con- to convert the extremes priate (“Whenever history of file es- the doctrine lines,” and then to “conflicting tinuum into invoked, must a close examination toppel is justify chang- to use this contrived conflict to, only what was surren made as not both lines ing the law to eliminate dered, for such a sur also the reason but in-between. everything also but render.”) Instead, majority adopts the rejected. that brighter line majori principal case cited The majority’s with the although Thus I concur v. Deere & ty’s “strict line” is Kinzenbaw Question precedent 1 in that answer (Fed. 383, U.S.P.Q. 222 929 741 F.2d estoppel may that arise on substan holds Cir.1984). de In Kinzenbaw the accused in addition grounds patentability tive that “adopted very [the element vice 103, § § I do not share 102 and those for the stated patentee] had eliminated majority’s of this answer to rejec purpose avoiding the examiner’s responding to a include amendment 389, obtaining patent.” Id. at tion and the Patent rejection any provision under U.S.P.Q. Holding that 222 at 933. Act. estopped asserting patentee was Precedent Federal Circuit the Federal Circuit stated equivalency, its de- majority The seeks buttress decide that it would not undertake to the law of parture from Wamer-Jenkin- more than he gave up whether Kinzenbaw simply resolving it by stating son allowance. Kin- had to in order obtain prece- “conflicting lines” of Federal Circuit viewed as zenbaw has not heretofore been However, that is neither an accu- dent. pre conflict in producing an irreconcilable precedent, nor an description rate of our ex contemporaneously cedent. As it was it. adequate reason to discard “highlight[s] ap plained, Kinzenbaw applying plication decisions Federal Circuit doctrine of should be have turned not on limit the case-by- legal as a matter on precedent, performed but on the

“conflicting lines” basis, public guided by equitable precedent This illus- case facts of each case. underlying the doctrines principles can variety policy of situations that trates the particular the facts technologic facts of asserted involved arise as to the Ltd., 781 Corp. v. Ultraseal equivalency, variety as the of cir- case.” Loctite as well

635 90, 861, 7, U.S.P.Q. Discussing n. 228 n. 7 presumption, F.2d 96 rebuttable (Fed.Cir.1985). the Court stated that “The presumption we ... gives proper have described defer- majority flags Hughes Co. Aircraft ence to the role of in defining claims an States, 717 F.2d v. United ” public invention and providing notice.... (Fed.Cir.1983), U.S.P.Q. pole Id. at 41 U.S.P.Q.2d S.Ct. Hughes disapproved “flexible line.” at 1873. The Court explained also that the this court reiterated rule Aircraft all-elements rule secures the “central func- estopped through a patentee is to recover themselves,” tions of the claims id. equivalency was disclaimed U.S.P.Q.2d at S.Ct. Id. at patentability. reasons prosecution history while estoppel, U.S.P.Q. ruling equiva at 481. The reinforced the new presump- rebuttable lency Hughes Aircraft, on the facts of tion, “further insulates the doctrine from later-developed technology, issue of has any feared conflict with the Patent Act.” repeatedly Hughes been sustained. See Id. at U.S.P.Q.2d States, v. United Aircraft Court also mentioned factors (Fed.Cir.1998) (rede term such as known interchangeability and oth- GVR, equivalency upon ination of the er criteria relevant to the determination of U.S. S.Ct. 137 L.Ed.2d equivalency. Wamer-Jenkinson). on based The notice function of claims was there- Although questions the presented enhanced, by for can liability there be no close, precedent every were often and not for infringement, by even a clear techno- view, judge always was of identical logic equivalent, every unless claimed ele- even the “strict line” attributed to Kinzen- patented ment of the is appropriat- device represents position baiu the extreme now used, ed and in the same role as in the adopted. the Wamer-Jenkinson Court claim, encountering estoppel. without A rejected position any the that of surrender device that does not meet all of legal these “bright matter establishes lines be- liability and factual criteria does not incur yond equivalents may which no be However, despite technologic equivalency. claimed.” 520 at U.S. S.Ct. a device that is unable to omit or substan- at 1871. The law of War- element, tially change even one claimed position ner-J'enkinson bars the now tak- and that is not the released en. history, probable liability has notice of for The “Notice Function” of Claims infringement. Court, The its reviewing prece preserve Thus the Court acted to the dent on equivalency purpose since Winans v. Den equivalents (15 How.) mead, 14 L.Ed. 717 prevent patent,” taking “fraud the while (1853), recognized long-standing ten specific steps to reinforce the notice func- sion equivalency between and the “notice of patent majority opin- claims. The patent function” of claims. The act ion remains silent on this important action ed to reinforce the “notice sharpen application function” of the doctrine of imposing a new preserving principle combination of criteria for while (1) Instead, equivalency, comprising availability. majority the new rebut- of its table presumption unexplained justification for amend “experience” relies on its as (2) ments, rule, (3) law, changes all-elements for its but makes no men- obligation played by to examine “the role tion of the careful Court’s balance of con- trols, each element in the specific explain why inadequate. context of the it is See Warner-Jenkinson, (“Our patent maj. reject claim.” op. at 574-75 decision to 1040, U.S.P.Q.2d approach adopted the flexible bar Hughes nearly twenty years I comes after assertion complete, barring our as the performing role experience matters.”) these equivalency as to elements. appeals for court sole to refíne experience use should We Patent The Carroll the Court equivalency, the criteria reexamination requested Festo eliminating entirely, it instead expected, Patent light of German Carroll deserving remedy to the bars ruling 1,982,379,which not been included No. had alike. undeserving After the re- original examination. granted but be- request examination was concerns complex of risk-laden In the merits, on the Festo fore reexamination inventions, en- involving and uncertainties 1 and added a original claim new cancelled the doc- competition, trepreneurship, original which differed from weighs on the side trine of ways including the addi- claim in sevеral possibility provides for it patentee, sealing rings.” pair tion of “a of resilient copies which against close protection nor changes; these explain did not Festo In this patent’s claims. merely skirt the changes for the explanation required, was system as to the way weight it adds by the examiner. before action were made majority incentive. an innovation majority presumption holds existing views the apparently this court were added sealing rings that the arises inventor and imitator as between balance patentability, claim for reasons of nation, to the disadvantageous why record not state does the “notice “paramount” now sets as court However, the this amendment made. competitor. would-be function” majority limits the evidence rebuttal However, optimum balance between produced pre- prosecution record technology- in a and imitator innovator (“We there- maj. op. at 586 sumption. See economy many involves consid- dependent narrowing that a amendment will fore hold no- primacy in to the of erations addition history estoppel give rise tice. pat- prosecution history unless ent reveals that the amendment made II patentability a purpose for unrelated concerns.”) Since the prosecution THE IN SUIT PATENTS for the amend- is silent as reason ment, to rebut Festo is held unable pre-Warner-Jenkinson law Applying presumption. adjudged equivalency, the district court patents appeal and to be this points both the Carroll Stoll Festo out on summary on in the infringed, rings were described cited sealing Carroll jury patent by and that this element judgment patent, and Stoll thus German law, prior from the again impart on prior verdict. On the did not distinction Wamer-Jenkinson, during reexamina- judg- argument art. Festo’s the law of those components to other appeal. on To- tion related were twice affirmed ments reached, device: simply are not day the merits patents of both were do not references]

because the claims cited disclose [The they device for in form before the overall structure of the rewritten narrower claim, patent, moving For the Carroll articles set forth were examined. 1) in do not disclose particular element to the claims be- Festo added an perma- patent, cylindrically-shaped plurality fore For the Stoll reexamination. magnets central depen- nent mounted improper multiple rewrote Festo claims, spaced axially member and mounting claim. dropping dent broader 2) ... an exterior apart each other nor the neither the Stoll Carroll from amended; annularly including plurality body at issue how- were the elements spaced magnets ever, permanent held patents estoppel shaped in is now both ¶ 3) § pair each other and U.S.C. apart stating: “Exact method operation resilient unclear. cushion members Is device a true formed of magnetic motor or clutch?” in The examiner [Emphases original] material.... objected also appar- claims compo- The mentioned several examiner ently were filed the same form inas in the “Reasons nents of the combination foreign priority application, as being Allowance,” sealing rings: not the but improper form, multiple dependent citing 8, 4, 5, 6, 9 are Claims deemed ¶ § U.S.C. [sic: ¶5?]. The exam- record, prior allowable over the art of iner also listed three references as “be- 1,982,379 including Patent No. German pertinent”; lieved the references were not art does not teach or because rejection discussed and no was made on render obvious the claimed combination prior art. plurality magnets, which includes the In response, explained Stoll the method members, end and cushion members operation specification and amended the relationship. the claimed accordingly. claims, Stoll also rewrote the sealing rings raise the issue with eliminating improper multiple depen- respect infringement under the doctrine dent form. original Stoll cancelled claim 1 claim equivalents; all of the other ele- independent and filed a new claim that literally pres- ments were conceded to be included original matter of de- ent in the devices. SMC pendent claims 4 claim 4 and 8. From Stoll sealing rings were not amended sealing rings took “first axially located out- prosecution. argument by No during side said guide rings,” and from claim 8 applicant sealing rings, was directed to the cylindrical Stoll took “a sleeve made of a patentability concerning and no issue of magnetizable material and encircles said the sealing rings was raised the exam- tube.” Thus the new claim these ele- Nonetheless, majority iner. holds narrowly ments were more claimed than in “narrowing it suffices as a amendment” original although not more nar- that the claim as a whole was narrowed rowly than in original dependent claims 4 sealing rings when the were added before and 8. The record states no reason Applying majority’s examination. new changes. these any narrowing rule that en- amendment patents Stoll also submitted two German tirely equivalency, factu- bars access to the during that had been cited examination of question equivalency al of between the the corresponding application, German pair sealing rings claimed of and the SMC the following explanation: with two-way ring is not reached.2 sealing of Applicant wishes to make record Ger- majority Thus the holds that the addition Offenlegungsschrift man No. 27 37 924 sealing rings of the to the Carroll claims and German No. 19 82 Gebrauchsmuster more, examination, before without immun- These 379. references were cited the charge izes the SMC devices from the of in the first Office Action received corre- infringement equiva- under the doctrine of sponding application. German These lents. obviously clearly references are distin- The Stoll Patent guishable subject over the matter of the patent application present application. The was filed in now in this Stoll claims English Accordingly, the United States as the transla- further comment about the patent application. tion of a matter of these references is German States, unnecessary. In the first action in the It is clear that the United believed rejected the under 35 examiner neither of these references discloses the equivalency ruling equivalency majority's In the district court issue of the that can not the sealing rings of the was based on the all- be asserted at all. rule, question by elements that is mooted law, majority has declined to the for the the interfer- preventing of structure use derogation of warnings against the located inside act on the impurities of ence and has expectancies, tube while rights and on the outside the vested tube the along arrangement applicable moved to make this decision declined only prospectively. See Warner-Jenkin tube. son, 1040, 41 at refer- majority that the above The finds J., (Ginsburg, concur the interfer- preventing ence to “structure ring). sealing relates impurities” to ence nonetheless, majority rules also

rings; addition, is now profound inequity equivalency to is barred all access that may that patents created between those “nar- the broadest claim because managed to avoid amend- fortuitously have amendment, although by rowed” sub- argument ment as to all elements or original in the the elements as stated ject change, imitation insubstantial claims was not issue. Dis- dependent practical that have not. The and those argument prose- of Festo’s that posing significance explored has not been claims were history shows cution aspect and indeed majority opinion, this rejection response rewritten argued. was not briefed or form, multiple dependent improper will majority holds “Because Ill require- unless it satisfies

not issue made an amendment ments section AND INNOVATION COMPETITION the statute is amendment satisfy POLICY for a reason related to patentability.”

made Thus Maj. op. at 589. this amendment arguments various were Although policy equiv- to the doctrine of held to bar access Wamer-Jen- to the Court in the briefed rejection was based on alents because the kinson enter appeal, the Court declined statutory requirement. formal arena: policy questions court does not reach the lengthy history doctrine function, result, way, identity equivalents strongly supports adherence insubstantiality change, or inter- Tank to find Graver to our refusal context of the inven- changeability Patent Act conflicts of the ma- tion. The formulaic framework can Congress legislate doctrine. vitiates jority opinion thus out of existence doctrine equivalents, respect without merits any policy time it chooses. The various claim. particular are arguments now made both sides Effect The Retroactive Congress, thus best addressed practice routine It has been this Court. initially present broad claims solicitors 1040, 41 invention, expectation in of hon- to an majority at 1871. The disre- claims in with the ex- ing the interaction and, despite admonition the ab- gards this very patent applications few As aminer. development policy sence of issues on the PTO without amendment or of traverse legislates a new balance be- patents appeal, will be free this argument,3 few issued consequences changes opti- of in tween inventor and imitator. The these requires § in- practice the ex- write MPEP 714.02. examination claims. Informal Patent inventions, simple quiry reports that for the closest found in cite references aminer granted patents are without prior art. Manual of most of a search of the See 10-15% amendment, although very rarely with- Examining ap- § Procedure 706. The Patent complex respond explain why For plicant argument. out inventions then must and applications is van- percentage of unamended patentable invention is the refer- over amend, add, cancel, ences, may ishingly and small. and re- nation’s given aspects is critical to the such as the nature of the mum balance technology, the of economy. technologic change rate field, particular maturity in the economy The modern industrial is driv- field, the cost of invention and develop- long It by technologic innovation. has en technologies, ment for various market technological ad- been understood structures, competitive risks and the ease vigor legal industrial flow from vance and imitation, and cost of and the choice be- policies encourage in- and economic patents tween in disclosure and maintain- investment support vention and ing technology secrecy. in Interna- products of invention. extensive tional patenting aspects and trade have scholarship this area is founded explored, been as well as the of pat- cost Joseph Schumpeter, studies of A. classical enting E.g., and the cost of enforcement. Capitalism, Democracy, Socialism and Gallini, T. Nancy Policy Costly Patent and (3d ed.1950) Harper, (recogniz- New York Imitation, (1992) 32 RAND J. Econs. 56 ing impact patent-based the economic of (discussing licensing policy factors such as as new industries and new innovation difficulties); technological and Richard J. old), goods and has been displace Newberry, Gilbert & David Preemp- M.G. Arrow, broadly explored, e.g., Kenneth J. tive Patenting and the Persistence Mo- Economic and the Allocation Welfare nopoly, Am. Econ. Rev. (1962) (discussing Resources Invention (1982) (industry-specific conditions such as property rights intеllectual in a free enter- patentable existence of substitutes and Solow, prise economy); Robert Technical cross-licensing, litiga- as well as costs Change Aggregate and the Production behavior). tion, strategic affect Function, 39 Rev. Econ. & Stat. study The field of innovation has evolved complexities “sequen- to include such encouragement of invention and in- innovation, tial” wherein invention fol- one vestment new ideas and their embodi- another, e.g., lows from disclosure of patent sys- is a function primary ments Scotchmer, Jerry R. Green and Suzanne tems, purpose aimed at the national Sequential On the Division of Profit industries, development improved new (1995) Innovation, 26 RAND J. Econs. 20 productivity, employment, increased and length out and (pointing growth overall economic as well as techno- play breadth a different role when innova- logic burgeoning advance. There is mod- and E. sequential); tion is G.M. Grossman scholarship in- ern directed studies of Helpman, Quality Theory Ladders in the vention, investment, systems, (1991) Groiuth, 58 Rev. Econ. Stud. 43 generally building on the work of William (discussing sequential how investment Nordhaus, Invention, Growth, D. and Wel- growth). innovation drives economic A Theoretical Techno- Treatment fare: recognized It is well that all of these Press, logical Change, Cambridge M.I.T. aspects varying weights, have that the (1969), and other scholars such as Kenneth surrounding develop- circumstances Dam, Underpinnings M. The Economic proper- ment and utilization of intellectual Laio, (1994); Leg. Patent 23 J. Studies Indeed, ty extremely are com- diverse. Silverstein, Patents, David Science and In- complain single patent mentators that a Linkages Impli- novation: Historical policy and law are unsuited to the Technological Competi- cations Global for activity range of scientific and commercial tiveness, Rutgers & Tech. L. Computer today’s economy. in (1991); Beier, J. 261 and Friedrich-Karl Significance System scholarship providing rigor The the Patent Thus of for Technical, Progress, understanding the role of intellectual Economic and Social innovation/competition policy, in Prop. Copyright property 11 Int’l Rev. Indus. & L. the limitations of economic models Critical attention has been even as are affect- and the imitator are rec- The inventor invention, risk, and investment of consider- by quite ed different economic in field writing this ognized. Scholars of innovator takes the risk ations. The analyses with introduce their tend to new failure of commercial success apology and an complexity salute to of unful- in new markets —the risk things However, within simplifications. their obsolescence, regula- expectations, filled scholarship, studies of the body of growing tion, The imitator technologic failure. industrial innovation relationship between risks; interested of these he is bears none against patent policy weigh optimal and not only products, in the successful A pa- here. majority’s policy decision failures; only profit- he is interested Design Patent and per Optimal entitled ones; he products, marginal not the able Innovations, Ma- Carmen the Diffusion of after the invention has been moves tutes, Katherine Rock- Regibeau Pierre & devel- and and the market made tested (1996), ett, 27 RAND J. Econs. margins. at lower oped, operate and can optimal scope policy “the concludes that weight on the patent system provides innovations that inventors of basic implies innovator, by the doctrine side of the aided they applications on protection obtain of close and its inhibition equivalents of would yet fully worked out. This have an incentive whose copying, establishing a more lenient review probably require However, by time. value has tested been practice.” Ed- claims than is the current recognized competition it is also well Kitch in The Nature and Func- mund W. healthy economy. to a Achiev- is essential & Econ. System, the Patent 20 J.L. tion of these factors is ing optimum balance of (1977) optimum patent proposes major poli- A importance. of vital national sufficiently provide should broad policy cy affecting in the foundational law change opens a scope to the inventor who new not be competition innovation and should field, adequate economic incen- provide study adequate made without of its conse- avoiding duplication of effort quences. tives while secrecy. discouraging recourse to Although burgeoning there is literature McFetridge Rafiquzzaman and M.

D.G. technologic property rights, intellectual on Scope and Duration the Patent not, it- equivalents the doctrine of has the Nature Research Right and Rival- self, major legal been a focus of and eco- ry, 8 Research Law & Economics: The scholarship. suspect nomic this is due Copyrights of Patents Economics issue, variety complexity (1986) discuss how the existence of diversity applications, of factual non-infringing interacting substitutes alters the bene- in- technologies, the breadth of inventor, patentees’ competitors’ ac- by fluences gained necessarily fit tivities, of com- complex and the nuances skewing incentives to invest. petition edge products at the generally agreed long-term It authors, however, A have others. few growth requires policy economic frame- critically equiv- the doctrine of considered encourages work that the creation and Merges P. & example, alents. For Robert technologies, commercialization new Nelson, Complex Richard R. in On the policy contrasted with a that facilitates 90 Colum. L. Scope, Economics Claim product, appropriation of the creative lest (1990), Rev. 839 observe that the doctrine product dry up in the face of creative to diminish incentives tends too-еasy appropriation. “Knowledge capi- out that competitors, point but tal,” property intellectual secured encourages competitors doctrine also rights, now rivals the traditional economic “leapfrogging” make advances instead of components productivity, capital of labor edge of the claims. simply copying at the formation, resources, questions and natural as the The the doctrine of raised the same as quite economic are not growth. foundation of inventor, investor, among of balance “scope.” competi- The issue those of tor, consumer, of literal and and the effect of the aspects directed to “scope” is Kitch, breadth, balance, by su- on that equivalents as discussed is explored not in the question equivalency quite parties’ The of is briefs and had pra. sparse the doc- for it Infringement participation, under amicus was not different. only at equivalents patentee trine is available issue. Of course no would of invention rely equiva- what is indeed the same choose to on the doctrine of against change, support as con- lents to commercial investment. with insubstantial public private by claims for The and interests served trasted issues broad undeveloped concepts. Equiva- equivalents the doctrine of derive from broad but its imitation, judge-made response per- thereby to the deterrence of close lency help- is system ing of the of claim- patentee nicious literalism assure to the the benefit of invention,4 scope of ing, enlargement obliging not an while would-be competitors in- technology the invention. to advance the stead of simply skirting edge majority make the My colleagues claims. Although easy its influence is not model,” “simplified error of the which as- quantify, generally accepted it is continuing supply prod- sumes a of new the doctrine contributes to an industrial ucts, ignores prior steps of inven- policy support technologic that seeks to majority tion and commercialization. The innovation. liability that the elimination of concludes infringement equivalency on will based CONCLUSION public “The will be public be of benefit: technology improve patented free to policy underlying The doctrine [Cjertainty it.... will design around has sustained been ab- improvements stimulate investment remedy sence of alternative in meritorious design-arounds.” Maj. op. at 577. How- cases, patentee’s when invention has ever, assumption placing new change taken trivial indeed been technology public always domain is By enabling the letter of the claims. path growth industrial optimum warranted, remedy remedy when supported by experience. Empirical not strength system doctrine adds rigor studies have added to the common Today’s technological vitality patents. knowledge profit op- sense that reduced patent system arose on a included capital portunity supply affects the change the doctrine A technology, launch a new and often the and imitator the balance between inventor See, technology e.g., creation of the itself. understanding careful of the con- requires Lerner, The Importance Joshua Patent sequences; a for the neatness preference Scope: Analysis, 25 RAND Empirical major precise justify “notice” does not (1994) (reviewing J. of Econ. 319 173 ven- tinkering strength of the with the overall re- biotechnology ture-backed firms and system, with unknown conse- ported that an increase of one standard quences. recipe This court’s new for risk- scope produced in average patent deviation patented pres- inventions copying free value). increase in the 21% firm’s im- policy ents considerations of national port. present patent supported law has blossoming technology-based industry The doctrine of has been competitive conspic- superfluous environment that is deemed as an instrument as today entrepreneurial vigor. justice, uous for and not until has it been its equivalent product majority patent against the that has 4. The exhibits either hubris or hu- explaining patentee mor in who is prices market. undercut his and taken his equivalency denied access to is also benefitted Maj. op. at 577. enforcing spared because he is the cost of his Company, Electric Power Co Kansas by this court. The “unworkable” deemed Inc., operative, Kansas and and Gas change in this sponte sua Federal Circuit’s Plaintiffs-Appel Company), Electric policy in industrial change law is a of, lees, discussion in advance requires public after, changed.5 This the law has been uncomfortably as a initiative flows court’s STATES, DEPARTMENT OF rights, on UNITED

ruling myriad that affects vested ENERGY, Energy Department theory, briefing or legal without a novel Atomic to the United States Successor argument. Commission, Energy Energy Re Development Administra search and tion, Defendants-Appellants. No. 99-1464. Appeals, States Court of United Federal Circuit. EDISON COMPANY CONSOLIDATED Dec. 2000. DECIDED: INC., YORK, New York OF NEW Authority, Niagara Mohawk Power Corporation,

Power Rochester Gas Corporation, Arizona

and Electric Corporation,

Public Common- Service Company, Duke Ener-

wealth Edison Energy States,

gy Corporation, Gulf

Inc., Corporation, Power Florida Light Company, Power and

Florida (on Nuclear, Inc. behalf of Jer-

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half of Kansas Power & 1,700,000 My complaint frequen light colleagues' small numbers in of over about 1,200,000 patents, cy equivalency litigation unexpired of which are of issues of must litigation Cases in be viewed context. Less than a hundred maintained and in force. picture fully year, provide do not courts with a balanced cases are tried each Litigants appeals workings rare few to the Feder of commerce. most of the hundred policy, par summaiy disposition. ly explore as committed al us on national Circuit reach equiv high cases do not Infringement ties battle for stakes. Such cases often raise issues exposition alency, usually present objective of the over offered as an alternative theo very riding ry infringement. are national interest. to literal These

Case Details

Case Name: Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., A/K/A Smc Corporation, and Smc Pneumatics, Inc.

Court Name: Court of Appeals for the Federal Circuit

Date Published: Nov 29, 2000

Citation: 234 F.3d 558

Docket Number: 95-1066

Court Abbreviation: Fed. Cir.