*3 LOURIE, Circuit Judge. Avionique, S.A. appeals from decision United States District Court for the Northern District of Califor- summary nia Ana- granting judgment that Devices, log literally infringe Inc. did not any patents grant- claim of Sextant’s ing judgment as a matter law that Ana- log infringe did not under the doctrine of equivalents.1 affirm. We
I. BACKGROUND A. Sextant’s “Marcillat” and “Bourn” Patents generally to patents pertain Sextant’s accelerometers, devices which are small acceleration and capable detecting automotive utility find in avionic and pat- applications. of Sextant’s The first Patent ents at issue in U.S. appeal, cross-appeal Analog support 1. also filed of the district Devices affirmance court. However, recognizing that it did during this action. oral Analog cross-appeal withdrew its because cross-appeal its standing have argument. arguments grounds merely alternative were 4,663,972, issued to inventor Gerard The fixed part comprises two “wings” 20 Marcillat March One 1985. embodi- and 21 having edges metallized 22 and 23. ment disclosed in the Marcillat configuration This produces thus two ca- body” shows “test 6 connected to and pacitors, the first by plates formed 19 and supported by two “flexible blades” 4 and 5. 22, the by plates second 18 and with air The flexible blades are anchored at their gaps in the capacitor between plates. This “lower to a ends” “fixed part.” test embodiment is shown in Figure 2 of Mar- body further comprises edges” “lateral cillat: and 17 having metallized edges 18 and 19. *4 The operates accelerometer as follows: Claim Marcillat, 2 of represen- which is when the device subject to an accelera- tative of the issue, reads as fol- tive force (ie., in the “sensitive axis” lows: 2), left to right in Fig. body test sways 2. An accelerometer sensor comprising like a pendulum within part the fixed a flat pendular structure made from thus varies the distance between the ca- one crystalline same wafer, pacitor plates. This corresponds variation said structure having in a same electrically to a change in the capacitance planet a] flat part, fixed paral- two of the capacitors, which can be detected by lel blades flexible in the said plane circuitry residing elsewhere on the fixed and delimiting therebetween part. Specifically, the specification dis- space, each of said blades having a closes that signals can travel from the first end portion fixedly connected metallized edges 18 and 19 of the test body to said part, fixed and a second end circuitry detection by metallizing portion, said structure further com-
the edges flexible blades 4 and 5. prising a flat body test connected to the second portions end The specification said also discloses that the blades so as to be suspended from accelerometer can be manufactured using part fixed and to be able to processing semiconductor techniques. For move in translation in the plane said example, specification discloses that axis, along sensitive said flat test the claimed “pendular structure” can be body extending at least partially “formed by a single piece i[n] micro-ma- into space, said chining a or crystalline quartz silicon wafer which may further serve [a] substrate wherein electrical connections be- for an integrated circuit.” electronic Mar- tween test body and the fixed cillat patent, 3,11. col. 10-13. part pendular structure by metallizations formed on from the suspended
formed flat fixed part flexible the thin faces of said blades. and to be able to move in transla- same plane along a sen- 8, 11. patent, (para- Marcillat col. 33—47 sitive axis under the effect of an ac- added). graphing celeration with a position which second of patents, The Sextant’s U.S. varies in relation with said accelera- 4,711,128, Patent was issued to inventor tion, said flat body test extending André Boura on April 1986. partially at least space, into said Boura patent formally is not related to the not, body wherein said flat comprises Marcillat it test patent; example, at least a first any application edge derived from related to carries a first metallization having Marcillat continuation or division. first and However, opposite Boura’s written second faces description and said flat makes clear part that his invention constituted fixed comprises least a sec- an improvement over Marcillat’s invention. ond and third edge carrying re- fact, the “Field of the Invention” is spectively a second and third me- tallizations, described Boura as “an accelerometer said second and third using aeeelerometric sensor with flat respectively metallizations facing pendular type structure of the described faces, said first and second opposite *5 [ie., 4,663,927 U.S. Pat. Marcillat].” so to form capacitors as whose ca- patent, Boura col. 11.8-10. This state- pacities vary depending po- ment by “Description is followed Boura’s sition of body, said test said first Art,” of the Prior which focuses on Marcil- being brought metallization to a magnetic capa- lat’s disclosure of a circuit V0, first voltage whereas the second returning body ble of the test to a proper and the third metallizations are re- position. rest The “aim” of Boura’s inven- spectively brought to a second and provide is summarized as “to ... an voltages Vj third and which are V2 type aeeelerometric sensor of a similar to capable generating an electro- [ie., the one described above Marcillat’s static return force on the flat test sensor],” 49-50, id. at 11. but which has an body. improved return mechanism. Specifically, Id., added). (paragraphing col. 11.15-42 Boura’s mechanism involved cer- applying optimal mathematically-derived tain vol- B. The Prosecution Histories Marcil- tages to the capacitor plates various of the lat and Boura sensor structure. portions The salient only Claim the in independent claim patent easily of the Marcillat patent, the Boura reads as follows: Original application summarized. claim 7
1. An comprising accelerometer sensor generically “capacitor plates.” claimed pendular rejected flat structure made from This claim was under 35 U.S.C. wafer, § crystalline prior
one and the same 103 over a art issued to having light said structure in a same Rudolf in of other references. Rudolf planet part, a flat fixed at least discloses an accelerometer formed ] parallel processing techniques two blades flexible in the semiconductor (a plane delimiting body pivotable flap) same therebet- which the test monocrystalline ween a each of said blades formed in silicon that has space, portion fixedly doped impurities been with to make it having a first end Similar to the Marcillat dis- part, to said fixed conductive. connected closure, body the test of Rudolf constitutes said structure portion, second end sensor. body capacitor flat test one of the plates further comprising art, Marcillat por- distinguishing second end In over this connected to the claim 26 canceled claim 7 blades so as to be and substituted tions of said place. in its Claim 26 was explicit 4,345,474). more The statement accompanying nature of the capacitor plates, claim- rejection examiner’s read: “Although ing plates as “metallizations.” Marcil- provides Deval a common ground potential lat’s amendment was accompanied by the ..., between fixed plates it would have following Rudolf, statement: “In the flap been an design obvious modification to and attachment means comprise monocrys- provide a ground common potential be- talline heavily doped silicon with boron and tween mobile capacitor plates [the] ... capacitor form a plate without metalliza- vary the voltage to the plates. fixed ” tions .... Joint App. Applica- A2224. Forming [the wafer Deval] microma- tion claim 26 eventually issued as claim 14 chining a monocrystal would have been an in the patent. Mareillat The term “metal- obvious manufacturing expedient.” Id. lization” appears also in other claims of A2302. Mareillat to describe the composition After rejection Boura, was made in structures other capacitor than plates, the examiner of the application Mareillat
such as the electrical connections claimed allowed the Mareillat claims. Accordingly, claim Marcillat’s quoted above. attorney, Sextant’s attorney same who addition to the limitation, “metallization” prosecuting Mareillat application, parties do not dispute that the claim canceled claim in1 Boura and substituted limitations “made one and the same claim 10 in its place, which eventually is- crystalline wafer” and “flat part” fixed sued as claim 1 in the patent, quot- were added to the claims of Mareillat to ed above. Boura stated the following distinguish them over the art. about claim 10: filed,
As originally the Boura application does present [Deval] a flat pendular contained one independent claim, structure but a structure comprising a which read as follows: flat test body hinged for rotation....
In an accelerometer using at least one In contrast with [ the Applicant’s ] sen- accelerometric sensor with a flat pen- sor, capacity [Deval’s] electrodes of the dular structure formed by microma- test body are formed by a thin layer of
chining substrate formed of a fine metal which covers the two sides of this monocrystal wafer and comprising a test body and does not consist in [sic] flat mobile mass suspended from the metallizations formed edge on portions rest of structure by means of two of body. this test addition, [Deval’s] parallel thin strips situated each capacity electrodes of the fixed structure mass, said of said said mobile mass cover the faces of the two side members comprises at least one mobile capaci- which are facing the two sides of the tor plate and the fixed part test body. This is quite different from pendular comprises element at least the Applicant’s sensor in which these two fixed capacitor plates disposed capacity electrodes are formed on the on each side of the plate mobile edge and portions of the fixed part. flat plate mobile is brought to a first An important advantage of the Appli- voltage V0, whereas the fixed plates cant’s that, structure in consists due to are respectively brought to [ ] second the parallel blades, flexible ... ca- and third voltages and pacity Vi V2 electrodes substantially remain are capable of generating an electro- parallel [when the test body moves]. static recall force on the mobile Therefore, FR a high precision can be ob- mass. tained. Id, at 2281. This rejected claim was under [T]he width of the facing metallizations ¶ § U.S.C. 2 for indefiniteness and which form .the capacity electrodes [of under 35 light § U.S.C. prior of a Deval] to the substantially equal art patent (U.S. issued to Deval Patent thickness of consists substrate which deposited doped po- techniques of these and use The surfaces a fine wafer. very lysilicon layer small and for those structures corre- facing metallizations body to the test and blades of the sponding foreseeable that it would it was not Analog summary judg- return moved for a sufficient claims. possible to obtain (which and for construc- proportional noninfringement ment force Fr metallizations). facing disputed certain limitations area of the S.A. v. Avionique, claims. See Sextant Thus, argued Boura Id. at A2310-11. Devices, Inc., Analog No. C-95-2838 SI from Deval distinguishable claim 10 was (N.D.Cal. 1997) (order granting Feb. (1) Deval a flat rotation- because disclosed summary judgment). The construed pendu- to the “flat opposed al structure as limitations, in favor of six four them (2) claim, Deval dis- lar structure” of thereafter Analog’s interpretation,2 and on the sides of forming capacitors closed literal granted summary judgment no body flat fixed instead of part the test Particularly infringement Analog. rele- (3) not disclose “edges,” their Deval did here, vant the court construed the term the ca- permitting flexible blades parallel deposited “metallization” to mean a metal- par- the sensor to remain pacitor plates of material, doing in so noted the lic (4) allel, Deval did not enable the use prosecution history relevance made of a return force. Other statements distinguished which Marcillat his concerning “good results” by Boura doping to achieve over Rudolfs use no that are obtained his structure have conductivity. at 14-15. suitable See id. art distinguishing relation to deposited did not use a Analog Because claim 10 and are therefore not noted layer, doped but instead used a metallic However, at A2311-12. new here. See id. layer, silicon the court held polycrystalline the three limitations claim 10 contained in- literally Analog’s device did to his claims that Marcillat had added patent. claim of the Marcillat fringe any to overcome the Rudolf reference. order successfully later moved for Analog many claim 1 is similar in re- law, judgment arguing as a matter of fact, 2. In spects to Marcillat claim com- history estoppel barred Sex- of Marcillat claim 2 and Boura parison Analog’s devices amendment, asserting tant from that, through claim 1 shows under the doctrine infringed either claims became sub- language of these *7 Concerning the Marcillat equivalents. except for the “where- stantially identical the court concluded that patent, dispute in” Sextant does not clauses. to se- attempt
use of this format was an limi- Marcillat added “metallization” claims, allowance of the Boura quick cure Ru- distinguish to his tations claims had been though even the Marcillat an doing, so he surrendered dolf and Thus, by a different examiner. allowed body the test in which accelerometer “metallization,” through strategy, this means are conductive and attachment crystalline “made from one and same of an additional de- without addition wafer,” limitations part” and “flat fixed layer. The Court further- metal posited of the claims of Boura. part became devices Analog’s more finds that accused of a without the addition are conductive Proceedings C. The District Court fall layer metal and therefore deposited of the “metallization” scope within the infringement, Analog Sextant sued is es- Sextant alia, estoppel. Accordingly, claim inter of claim 2 of Marcillat infringement un- claiming from topped 1 of Boura. Analog’s accused devices as to equivalents the doctrine of der using processing fabricated semiconductor wafer,” paral- “two part," and line "flat fixed 2. The court construed the claim limitations but all structure,” lel blades." The court construed "pendular plane,” same "in a Analog’s favor. "metallization,” two of these limitations in crystal- first "one and the same “metallization” element of the Marcillat terms towas quick secure allowance of patent claims. application Boura and to avoid the objections raised during Avionique, Devices, S.A. v. Marcillat’s Analog Inc., prosecution of his SI, patent. No. Under C-95-2838 these slip op. at 9 (N.D.Cal. circumstances, 1997) (order the Court finds Sept. granting law). should be judgment estopped as a matter of The court assert- ing infringement also under the concluded doctrine that Marcillat’s addition equivalents against Analog “made from one and the as to these crystal- same line wafer” elements[.] Because Sextant “flat fixed part” limitations estopped also from asserting created estoppels infringement precluded under the doctrine of equivalence equivalents Sextant’s theories as to against “metallization,” individual Analog’s accused devices. See id. at “made 9-13. from one and the wafer,” same and “flat The court next addressed the impact of part” fixed limitations of the Boura prosecution history estoppel on the Boura claims, the court judgment GRANTS patent and concluded that the estoppels favor of Analog on Sextant’s doctrine of present in the Marcillat file were equivalents claim regards the Boura applicable to limit the scope of equivalence patent. of the same claim terms in the Boura patent. (brackets explained Id. at quote 14-15 from Pall original).
Analog argues that Boura’s amendments to his claim language in response to the Sextant appealed the noninfringement section [rejection] should create an rulings to this court. We have jurisdiction estoppel. agrees The Court with Analog pursuant 1295(a)(1) § 28 U.S.C. (1994). that under the case, unusual facts prosecution history estoppel applies. II. DISCUSSION See Corp. Pall Separations, Micron A. Standard Inc., Review (Fed.Cir.1995) (“[change made in order to more partic- Judgment as matter of law ularly point out the applicant’s invention (JMOL) is appropriate when party “a not presumed are] to raise an estoppel, been fully heard on issue and there is but is facts, on reviewed its with the legally no sufficient evidentiary basis for a guidance precedent.”) jury reasonable to find for that party on On having his rejected as indefi- issue.” 50(a)(1). Fed.R.Civ.P. We nite Examiner, Boura incorporat- review a district court’s decision a mo ed the claim terms of the Marcillat pat- tion for novo, JMOL de reapplying the ent which recently had been allowed and JMOL standard. See Markman v. West then argued that these claim terms ad- Instruments, Inc., view 967, 975, 52 F.3d dressed the Examiner’s concerns. Of USPQ2d *8 (Fed.Cir.1995) (en 1326 particular importance is banc), the timing of aff'd, 370, 517 U.S. 116 1384, S.Ct. Boura’s amendments. The claims of the 134 USPQ2d (1996). L.Ed.2d 38 1461 Marcillat patent had been allowed on Summary judgment is appropriate when 22,1986 October after Marcillat nar- had there are genuine no issues of material rowed and redrafted his claims to the fact and the moving party is entitled to satisfaction of the Examiner. Boura in- judgment as a matter of law. Fed. corporated the 56(c). terms from the Marcillat R.Civ.P. We similarly review a dis (i.e. patent “metallization,” “made from trict court’s grant of summary judgment one and the same crystalline wafer,” novo, and de reapplying the summary judg “flat fixed part”) into his patent own ment standard. See Conroy v. Reebok application on May 15,1987. Int’l, Ltd., It 14 appears F.3d 1575, USPQ2d 29 that Boura’s intent 1373, 1377 in adding (Fed.Cir.1994). these
825
lic
While Sextant was free to act
In-
material.
B.
Construction
Literal
Claim
fringement
lexicographer
as its own
and to define
its plain
term in a manner different from
analysis entails
infringement
“An
in a
meaning,
(“Although
see id.
words
determining
is
steps.
step
two
The first
ordinary
generally given
claim are
their
meaning
scope
patent
customary meaning,
patentee may
step
The second
infringed.
asserted to be
lexicographer
choose to be his own
and use
comparing
properly
is
construed
terms in a manner different from their
infringing.”
claims to the device accused
ordinary meaning,
long
special
as
Markman,
976, USPQ2d
34
at
F.3d
clearly
definition of the term is
stated
construction,
is
step,
1326. The first
history.”), it
patent specification
or file
law,
review de
question
which we
speci-
not
done so here. The Marcillat
Techs.,
Cybor
v. FAS
Corp.
novo. See
only
deposition
fication discloses
Inc.,
1448, 1456,
USPQ2d
138 F.3d
materials,
patent,
metallic
see Marcillat
(Fed.Cir.1998) (en banc).
The
(“The
8,11.
on the
deposited
col.
1-8
metal
factual. See North Am.
step
second
may
gold
...
or
pendular structure
Co.,
Vaccine,
Cyanamid
Inc. v. American
alloy
alloy
chromium-gold
as a
gold
such
1571, 1574, USPQ2d
However,
circuits
example.
...
these
(Fed.Cir.1993).
claim,
construing a
When
or alumi-
preferably
made from silver
the evidence
principally
a court
consults
....”)
added), and does
(emphasis
num
viz., the claims
patent,
intrinsic
that the term “me-
suggest
not otherwise
themselves,
description portion
written
tallization” can include conductive materi-
and the
specification,
generally
als
or materials made conductive
history.
Corp.
Concep
See Vitronics
fact,
by doping.
specifications
tronic, Inc.,
1576, 1582-83,
90 F.3d
(Fed.Cir.1996).
concepts
Boura use the
1573, 1576-77
both Marcillat and
USPQ2d
in re-
of “metallization” and “conductors”
that the court erred
argues
Sextant
different, contexts,
lated, but somewhat
four claim limita-
its construction of the
they
do not have identical
suggesting
it, viz.,
against
tions that were construed
See, e.g.,
patent,
Marcillat
col.
meanings.
“metallization,”
crystal-
“one and the same
(“this
7,11.
conducting strip being
3-5
con-
wafer,”
part,”
fixed
and “two
line
“flat
thin
a metallized one of the
faces
nected to
we conclude
blades.” Because
parallel
blade”);
patent, col.
the flexible
err in its
court did not
the district
(“[T]he
of the mobile
edges
11. 20-22
“metallization,”
the term
construction of
covered metallizations
teeth are
summary
judgment
and therefore
conducting layer
right
an-
extend the
grant-
infringement
properly
literal
no
gles.”).
Sex-
Analog, we need not address
ed to
respect
with
latter
arguments
tant’s
of the Marcillat
prosecution history
three limitations.
applicant
in which the
distin-
patent,
structure over the
guished his “metallized”
argu
construction
Sextant’s claim
Rudolf,
“doped silicon” structure
ironic contention:
hinge
ments
on an
our conclusion that
term
strengthens
to its own
the evidence intrinsic
only
mate-
“metallization” denotes
metallic
construe the
and insufficient
ambiguous
.to
rials,
The ex-
doped
silicon materials.
claims,
resort
to extrinsic
requiring
thus
can-
proffered by
trinsic evidence
testimony. We
expert
such as
evidence
*9
by the
not alter the construction indicated
in
evidence is
that the intrinsic
disagree
evidence,
injecting an am-
thereby
intrinsic
“metalliza
the term
to construe
sufficient
See Bell &
biguity where none exists.
lan
with the claim
first
tion.” We start
Document
Prods. Co.
1582,
Management
Howell
Vitronics,
F.3d at
39
90
guage. 'See
706,
701,
45
Sys.,
Altek
“metalliza
v.
132 F.3d
term
The
USPQ2d at 1576.
(hold-
1033,
(Fed.Cir.1997)
USPQ2d
use of a metal-
certainly
tion”
connotes
ing that
may
extrinsic evidence
not be
[w]hen determining
whether
upon
relied
during claim construction
history estoppel applies to limit the doc
when the intrinsic evidence is sufficient to
trine of equivalents, a court must exam
claim).
construe the
Accordingly,
dis-
ine the reason why
applicant
amend
trict court
not
did
err in its
construction
ed claim. See Warner-Jenkinson, 520
the term “metallization,” and
17,
it therefore
U.S.
117 S.Ct.
137 L.Ed.2d
did not err in granting
summary judgment
41 USPQ2d at 1872. If such exami
that Analog’s device, which
doped
uses
nation indicates that a patent applicant
polysilicon, did
literally
not
infringe any of
has made a substantive change to his
the claims of the Marcillat or Boura pat-
claim that clearly responds to an exam
ents.
rejection
iner’s
of that claim as unpat-
entable
prior art,
over
prosecution histo
C. Prosecution History
ry
'Estoppel
estoppel applies claim;
only
the question of the scope of the estoppel
As we recently
banc,
restated en
remains. No presumption
needs
be
An accused device that does
literally
applied in such a case
because
rea
infringe a claim may still infringe under
son for the amendment is clear.
the doctrine of equivalents if each limita
Bai v. L & Wings, Inc.,
L
160 F.3d
tion of the claim is met in the accused
1355, 48 USPQ2d 1674,
(Fed.Cir.
device either literally or equivalently.
1998).
case,
In this
original claim 7 of
Prosecution history estoppel provides a
Marcillat was drawn broadly to capacitor
legal limitation on the application of the
plates. This claim was rejected over Ru
doctrine of equivalents by excluding
dolf, to which Marcillat
responded by
from the range of equivalents subject
amending his claim to include the “metalli-
matter surrendered during prosecution
zation” limitation and by distinguishing
of the application for the patent. The
Rudolf on the basis that it disclosed the
estoppel may arise from matter surren
use of doped silicon. Marcillat’s amend
dered as a result of
amendments
ment was thus clearly responsive to the
overcome patentability rejections, or as
examiner’s prior art
rejection. Under
a result
argument
to secure allowance
such circumstances, prosecution history es-
of a claim.
Prosecution
estoppel
toppel plainly applies.
is a legal question subject to de novo
review on appeal.
As
scope of estoppel, Sex
tant
contends
Cybor,
Analog’s
accused
1459-60,
F.3d at
de
46 USPQ2d
vices differ too
(citations
substantially
omitted).
from the
1177-78
de
vice
disclosed
Rudolf
history estoppel to preclude
1.
The
conclusion
Marcillat Patent
that Analog infringes the
Marcillat
Sextant makes several arguments
under the doctrine
equivalents.
Our
concerning the district court’s alleged
case law recognizes that
scope
pros
“misapplication” of the law of prosecution
ecution history estoppel “may have a limit
history estoppel following the Supreme
ing effect within a spectrum ranging from
Court’s decision in Warner-Jenkinson Co. great to small to zero. The effect may or
v. Hilton
Co.,
Davis Chemical
520 U.S.
may not be
application
fatal to
aof
range
827 prior that the art of a reason Case law has established point vantage from viewed provide history estoppel see patentee, prosecution of competitor able Co., oriented” limitations independent “policy 8 F.3d Steel Jessop Int'l v. Haynes (Fed. See 1652, of Loctite equivalents. 1656 on the doctrine 1573, 1578, USPQ2d 28 Ltd., 861, 870, 781 F.2d 1076, Corp. 29 Cir.1993), rehearing, 15 F.3d Ultraseal on (Fed.Cir.1985), 90, overruled (Fed.Cir.1994), USPQ and is deter USPQ2d 1958 AB v. grounds by Nobelpharma art and on other prior reference to the mined with Innovations, Inc., 141 F.3d Implant made arguments any amendments and/or (en banc); (Fed.Cir.1998) art, USPQ2d 1097 see 46 distinguish to such attempt in an Int'l, Jessop Inc. v. Steel Kogyo Haynes see also Kinzoku Corp. Festo v. Shoketsu 1573, 1579, Co., USPQ2d Co., 857, 864, 8 F.3d 72 F.3d Kabushiki (Fed.Cir.1993), (Fed.Cir.1995), rehearing, 15 vacat 1656-57 USPQ2d (Fed.Cir. USPQ2d 117 F.3d grounds, 520 U.S. ed on other 1994). (1997). Therefore, the fact that Sextant is 1240, 137L.Ed.2d 323 S.Ct. art is not fatal to practicing prior not Here, estopped clear that Sextant is it is history prosecution of es- application Analog’s that successfully asserting toppel. equiv- silicon are employing doped devices claims. “metallization” of the alent to the Patent 2. The Boura above, Marcillat’s “metallization” As noted that the district court Sextant contends response in limitation was added histo- to hold that had no basis Rudolf, which of dis- examiner’s citation range to limit the ry applies estoppel In addi- doped use of silicon. closed the affordable to the otherwise equivalents amendment, argued Marcillat tion to the in the claims term “metallization” Ru- distinguishable over that its claim was Boura, arguments two in and it makes “com- capacitor plate Rudolfs dolf because contention. Sextant first support of that heavily monocrystalline silicon prise[d] 1 to that Boura amended claim argues ... without metalliza- doped with boron re- the examiner’s indefiniteness overcome effect App. Joint at A2224. The tions.” ¶ 112, 2, § jection under 35 U.S.C. argument of Marcillat’s amendment and re- “principle as the Sextant characterizes clearly silicon materials was to surrender time. Sextant jection” pending by doping. Analog’s made conductive opinion in Supreme Court’s War- cites within devices thus fall doped-polysilicon support its contention to ner-Jenkinson therefore do estoppel scope response made in amendments under the infringe patent the Marcillat not give prose- not rise to rejections § 112 do Accordingly, the equivalents. doctrine next ar- history estoppel. Sextant cution granting judg- not err in court did district “incorporat- the court erred gues that law on as a matter of Analog ment history of Marcillat into the file ing” Analog infringed the claim that Sextant’s Boura, thereby raising history of file the doctrine Marcillat under present that was estoppel equivalents. ac- that such contends Marcillat. Sextant ap- that the court’s argues Sextant next applica- the two because improper tion was history estoppel plication related, and there- formally not tions were as to “demonstratively erroneous desiring competitor a reasonable fore Analog scope apparent because it is not Boura would scope the claim assess art.” prior the surrendered practicing history of Marcillat. file investigate the at 39. We dis- Brief Opening Sextant’s Court in War Supreme agree. practicing If Analog were prosecu whether held art, defense complete it ner-Jenkinson would have had applied to limit the estoppel charge, infringement Sextant’s depended on the equivalents be irrelevant. doctrine prosecution history would *11 828 reason in the prosecution disclosed 1051, history 137 146, L.Ed.2d USPQ2d 41 at
for the amendment
to the claims. See
1873.4
Warner-Jenkinson,
30,
We and further problem, are left with the insulates the doctrine of any what to do a from feared case like the one at conflict with the Patent bar, where the record seems not to re- Act.
veal the reason for including the lower
Warner-Jenkinson,
33-34,
rendered subject matter is further exacer CONCLUSION bated if the patentee does provide not clarification during rebuttal. Indeed, The district this court did not err in its is case an example of the futility of a scope construction of the “metallization” limita- analysis in the tion, circumstance which the which appears in the claims of both presumption is operative. Unguided by the Marcillat and Boura patents. The the prosecution history, the prior art, ap court did not err in granting summary plicant’s argument during prosecution, and judgment that Analog’s devices do not lit- sufficient evidence in rebuttal to the pre erally infringe the claims of either of these sumption, we have no way to set reason patents. Moreover, the court did not err able limits on how far beyond the literal in concluding that prosecution history es- scope of the term “metallization” the es- toppel precluded Sextant from asserting toppel will allow the doctrine equiva that Analog’s use of doped silicon is equiv- lents to reach. We can expect reasonable alent to the “metallization” limitation of competitors assessing the file history of the Marcillat claims. Finally, the court’s Boura to be equally puzzled as to the scope judgment that Analog does not infringe of any potential estoppel. Thus, it is logi under the doctrine of equivalents is af- cal and fair that prosecution history estop- firmed because the unrebutted operation pel arising from the operation of the War of the Wamer-Jenkinson presumption ner-Jenkinson presumption allows the concerning the “metallization” limitation doctrine of equivalents no room to operate. bars the operation of the doctrine of equiv- Finding the Supreme Court’s language alents as to that element. The judgment clear, we hold that circumstances in of the district court is therefore which the Wamer-Jenkinson presumption is applicable, ie., where the reason for an AFFIRMED.
7. Because we affirm the district court on a
"incorporating” the Marcillat file history into
rationale,
different
we need not reach Sex-
the Boura file history.
tant's argument
the
that
district court erred in
Boura
limitation.
ing
“metallization”
the
Judge,
SMITH,
Circuit
Senior
invention
newly claimed
the
distinguished
part.
dissenting
as fol-
reference
Deval
of the
that
from
analysis
majority’s
the
with
agree
I
Applicant’s
the
[ ] with
“In contrast
lows:
and I
construction
court’s
the district
capacity
the
sensor,
patent,
cited
in this
properly
district
the
that
agree
aby
body are formed
test
electrodes
Analog’s
that
summary judgment
granted
the two
covers
metal which
layer of
thin
literally infringe the
not
did
device
not consist
does
body and
of this test
sides
I
patents.
Boura
or
the Marcillat
of either
edge portions
on
formed
in metallizations
Sextant
majority that
the
with
agree
also
different
quite
is
... This
body.
estopped
these
in which
sensor
Applicant’s
from
asserting that
from
patent
the Marcillat
edge
on
formed
electrodes
capacity
of that
the claims
infringes
Analog’s device
(emphasis
part”
flat fixed
portions
of equivalents.
the doctrine
under
patent
added).
however,
majority’s
dissent,
from
I
clear that
it
makes
passage
quoted
The
pre-
Wamer-Jenkinson
holding
limitation
the “metallization”
added
Boura
relying on
estops
sumption
with, and
invention
his
to contrast
in order
respect
with
equivalents
the doctrine
by De-
from,
disclosed
it
distinguish
patent.
se
per
val,
by requiring metallizations
not
metallizations
that the
by requiring
but
Opinion
Majority
The
on
not
body
test
edge
court’s
the district
affirms
majority
Therefore,
shows
record
side.1
the Boura
summary judgment
was added
limitation
“metallization”
the doctrine
infringed under
not
to patentability
reasons related
for
following reason-
on the
based
equivalents
should
presumption
Wamer-Jenkinson
(1)
disclose the
not
Boura did
ing.
apply.
limitation
“metallization”
adding the
that Boura
acknowledges
Wamer-Jenkinson,
*16
majority
therefore, under
“metallization-on-the-edge” limi-
the
was
added
that the limitation
presume
must
we
De-
rejection over
to a
response
tation
patentability.
to
related
for reasons
added
parts:
two
into
val,
the limitation
splits
but
presump-
(2)
not rebutted
Since
“on-the-edge.”
“metallization”
Therefore,
(3)
the Wamer-Jenkin-
tion.
from
formed
capacitors
discloses
Deval
applica-
and the
applies
presumption
son
reasons, that
metallizations,
majority
the
is
equivalents
the doctrine
tion of
have been
could
limitation
part
“metalliza-
barred,
equivalents
so no
the invention
distinguish
to
in order
added
patent’s
Boura
by the
are covered
tions”
does
record
the
art. Since
prior
the
from
claims.
adding
any other
not disclose
the Wamer-Jenkinson
disagree
I
limitation,
majority
“metallization”
The Boura
here.
applies
presumption
presump-
the Wamer-Jenkinson
applies
the rea-
clearly shows
unrebutted,
applica-
and bars
tion,
it
finds
was add-
limitation
“metallization”
son
equivalents.
of the doctrine
from
invention
his
distinguished
ed:
the Wamer-Jenkin-
applying
cases
Our
by requiring
art
prior
the Deval
such
support
do not
presumption
son
edge, not
on the
metallizations
that the
For
limitations.
of claim
parsing
delicate
the first
response
his
In
the side.
v. &
of Bai
L
case
recent
in the
example,
re-
original,
replaced
action, Boura
(cid:127)Office
(Fed.Cir.
Inc.,
F.3d 1350
Wings,
L
contain-
claim 10
with new
claim 1
jected
parallel
while
"side”
ter wafer
precisely
clear
it
make
record does-not
1. The
clear
record
Regardless, the
body
plane.
test
a "side”
distinguishes
what
to distin-
order
added
per-
the limitation
"edge” is
an
Perhaps
"edge.”
from
guish
reference.
the Deval
accelerome-
flat
plane
pendicular to the
1998),we held that the Wamer-Jenkinson
ing prosecution in support of patentabili-
presumption did not
Bai,
apply.
ty, whether or not actually required to
applicant claimed a target game including
allowance,
secure
may create an estop-
a fabric-covered, dish-shaped glove. Origi- pel.”).
nal claims 1-3
rejected
were
over a combi-
The majority
case,
in this
by contrast,
nation
prior
of four
patents,
art
including reasons that because the “metallization”
(Hartel)
one
that disclosed a dish-shaped
limitation was disclosed in the
art,
prior
it
structure.
In response, Bai amended
could not have been necessary to distin
claim 1 to include all the limitations of guish Boura’s invention and therefore was
original
1-3,
along with two addi- not added for a reason related to patenta-
tional limitations: that
glove
be “hemi- bility. The Bai court rejected the very
spherical” and that
it
include a “strap
logic
on by
relied
the majority in this case.
mounted on the rear side.” Id. at 1352 Panel decisions are binding on future
and n. 1. The amended claim was allowed.
cases, unless
overturned
the court en
The district court concluded that Bai banc. See UMC Elees. Co. v. United
had added the “hemispherical” limitation States, 816
(Fed.Cir.
652 n. 6
in response to the obviousness rejection,
1987) (“A panel of this court is bound by
despite Bai’s argument that the
prior
limitation
precedential decisions unless and un
was added merely to clarify the claimed til
banc.”).
overturned en
The majority’s
structure and not to distinguish over
approach
today is
foreclosed Bai.2
prior
art.
Id. at
1354. On appeal,
As a colleague so eloquently stated,
agreed
we
that the amendment “was clear-
require
“[w]e
practitioners who appear be
ly an attempt by Bai to differentiate his
fore this court to apply rigorous logic and
invention over the
patent.”
Hartel
Id. at
consistency in their advocacy; we should
1355.
require no less of ourselves whenever we
We reached this
conclusion despite
providing
directions to the bar.” Lit
fact that Bai had added the
ton Systems,
“strap” limi-
Inc. v. Honeywell, Inc., 145
tation at
the same time
F.3d 1472,
as the “hemi-
1478 (Fed.Cir.1998) (Gajarsa,
spherical”
J.,
limitation. The
dissenting
Bai
denial of rehearing en
never
banc).
considered whether
The inconsistency
“hemi-
engendered by
spherical” limitation
the majority’s
was necessary
approach
in this case does a
distinguish
disservice
art
view of
the development
juris
our
simultaneous
prudence.
“strap” limitation, and in
*17
fact rejected Bai’s argument
that “the
In addition, I am uneasy with applica-
amendment could not have been made to tion of the Wamer-Jenkinson
presump-
overcome prior art because it was not
tion for the first time on appeal, because I
necessary to overcome the prior art re-
do not believe that Sextant has had an
jection.”
Id. at 1356. The Bai court
adequate opportunity to rebut
the pre-
held that Bai was estopped from raising
sumption. This court should not lightly
the issue of the necessity of the “hemi-
conclude that the record presents no rea-
spherical” limitation.
“Whether or not
son for a claim amendment, long after the
the ‘hemispherical’ limitation was super-
parties have exhausted their opportunities
fluous, the prosecution record clearly re-
to present evidence and arguments. This
veals that Bai made this amendment
to is especially so when that conclusion re-
overcome prior
Id.,
art.”
citing Ameri-
quires the court to limit patent
to
claims
can Permahedge
Barcana,
v.
105 F.3d
their
literal
Here,
terms.
the district
(“[C]lear
assertions made dur-
court concluded that the record did in fact
2. The majority's approach is also
Hughes
inconsistent
States,
Co. v. United
Aircraft
F.3d
Techs.,
with
Inc. v. Cat
(Fed.Cir.
Insituform
Contract-
1998).
Inc.,
ing,
itor reasonably may conclude patentee surrendered to gain issuance of pat- (citation omitted)). ent.” ATHLETIC TRACK AND COURT We have a found basis for prosecution CONSTRUCTION, Defendant- history estoppel in statements made by Appellant, patent applicants in variety of contexts during prosecution. See, e.g., Haynes Int’l, Inc. v. Jessop Co., Steel (Fed.Cir.1993) Owen E. Perry, and cases cited there- Sanctioned in. But we have never Party-Appellant. based finding of prosecution history estoppel on a state- 97-1432, Nos. 97-1504 and 98-1045. ment made applicant during different prosecution of an unrelated application, United States Court of Appeals, nor have we ever hinted that competitors Federal Circuit. should examine the file histories of applica- tions other than the one suit in order to April 1999. determine the scope of equivalents that may be accorded the patentee. The dis-
trict court’s importation of the Marcillat
patent’s prosecution history into the Boura
patent was erroneous and should be re-
versed.
Conclusion The district court’s holding that
prosecution history of the Marcillat patent
estops Sextant from asserting the doctrine
of equivalents in the Boura patent is con-
trary to precedent our and should be re-
versed. In addition, the majority’s holding part “metallization” of Boura’s “metallization-on-the-edge” limitation is subject to the Wamer-Jenkinson pre- sumption is contrary our precedent
to the facts of this case. I would reverse
the district holding court’s with respect to
the Boura patent and remand for further
proceedings to determine whether Ana-
log’s device infringes the claims of the
Boura patent under the doctrine of equiva-
lents, as equivalents those limited the Boura pat- ent and our controlling precedents. I
therefore dissent from that part of the
panel’s disposition of this case.