15 F.3d 1076 | Fed. Cir. | 1994
Lead Opinion
Prior Report: 8 F.3d 1573.
ORDER
This case is now before us on appellant’s petition for rehearing and suggestion for rehearing in banc, filed Nov. 15, 1993 and appellee’s brief in response thereto, filed Dec. 2, 1993, which have now been considered.
In order to clarify that the estoppel in this case arose from pre-issuance activities, and to emphasize the unique circumstances present in this case, we grant the petition for rehearing for the limited purpose of making the following language changes:
Page 1577, col. 2 line 33, delete “or reissue”.
Page 1578, col. 1 line 19, delete “or reissue”.
Page 1578, col. 2 line 8, delete “or reissue”;
line 26, change “It is only” to — However, — ;
line 29, change “them can it” to — them, it can — ; and
line 30, after “established.” insert
—A different case would be presented had the cancellation of original claims 1 and 4 occurred while prosecution was on-going, i.e., while Cabot had the opportunity in this pro
In all other respects, the petition is denied.
Concurrence in Part
concurring in part, dissenting in part.
I of course concur in withdrawal of the court’s requirement that the patentee must have sought a reissue patent in order to invoke the doctrine of equivalents. The requirement that a patentee have attempted by reissue to obtain claims of a scope that would have been literally infringed, before being permitted to rely on the doctrine of equivalents, was curious indeed.
However, the panel majority has chosen to retain the similar obligation in the form of filing a continuation application. The purpose of this obligation is apparently to require farther prosecution of the broader claims that had been rejected by the examiner and the Board of Patent Appeals, before the patentee will be permitted to rely on the doctrine of equivalents. The panel thus requires that refiling be made, fee paid, prosecution pressed, issuance delayed, attorney fees incurred, and perhaps appeals taken, lest the patentee forfeit the opportunity to invoke equivalency over the life of the patent.
This obligation is no less curious than that of reissue: if the result were the grant of claims broad enough to read on the accused composition, then there would be no need for recourse to the doctrine of equivalents; and if the result were claims that do not reach the accused composition, it seems to me that there would be an enhanced estoppel, not an enhanced access to the doctrine of equivalents. Indeed, the panel majority’s new rationale, placing controlling significance on the fact that Cabot did not cancel claims 1-4 until after the appeal instead of during prosecution, itself raises new and troublesome questions.
This expensive and unworkable procedure is not the way to cure any perceived deficiencies in the doctrine of equivalents. This doctrine has long existed to permit the courts to remedy a “fraud on the patent”; it is not necessary to change the entire pattern of patent prosecution in order to permit the courts to reach a just result.