Prosecution History Estoppel. Prof Merges Patent Law – 4.14.08. U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd. 505 F.3d 1371 (Fed Cir 2007). Issues. Notice -- U.S.C. § 287(a).
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Prosecution History Estoppel Prof Merges Patent Law – 4.14.08
U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd. • 505 F.3d 1371 (Fed Cir 2007)
Issues • Notice -- U.S.C. § 287(a). • “[w]here the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment”
Issues (cont’d) • Claim interpretation
Claim interpretation • Order of magnitude or range? • We therefore affirm the district court's claim construction of the halogen range “between 10 -6 and 10 -4 <<mu>>mol/mm 3” as meaning “between 1 x 10 -6 and 1 x 10 -4 <<mu>>mol/mm 3.” – p 5
In some scientific contexts, “1” represents a less precise quantity than “1.0,” and “1” may encompass values such as 1.1 that “1.0” may not. – p 6
Infringement • “between 1 x 10 -6 and 1 x 10 -4 <<mu>> mol/mm 3” infringed by lamp with halogen concentration of 1.2 x 10 -4 ? • That is (I think): Does range “from .00010 to .000001” cover product with concentration of .00012?
P. 6 • Litigation waiver argument • We emphasize that the claim construction we affirm today should not be read to state the endpoints of the claimed range with greater precision than the claim language warrants.
Holding: DOE p. 7 • “We hold that . . . resort to the doctrine of equivalents is not foreclosed with respect to the claimed concentration range . . . .”
Vitiation – p. 8 • Holding of nononfringement because interpretation “ ‘vitiates' a claim limitation is nothing more than a conclusion that the evidence is such that no reasonable jury could conclude that an element of an accused device is equivalent to an element called for in the claim, or that the theory of equivalence to support the conclusion of infringement otherwise lacks legal sufficiency.” 469 F.3d at 1018-19.
“Vitiation” • Defined: “reduce the value of” ; “render ineffective” • Latin vitium: reduce, impair, corrupt (thus – vice, vicious)
Examples • Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091 (Fed.Cir.2000) • “In Moore, no reasonable juror could have concluded that an adhesive strip running only 47.8% of the lengths of the accused product's margins-a minority of the lengths-was equivalent to one running a “majority of the lengths.”
Moore mailing form • “first and second longitudinal strips of adhesive disposed in said first and second longitudinal marginal portions, respectively, of said first face, extending the majority of the lengths of said longitudinal marginal portions, and parallel to said first and second longitudinal edges;”
Wleklinski v. Targus, Inc.Slip Copy, 2007 WL 4460620C.A.Fed. (Cal.),2007 (unpub) • The invention claimed in the ′388 patent is a strap assembly that has both stretchable and non-stretchable strap members.
We agree that there exist more than “insubstantial differences” between the accused products and the claimed invention; this precludes a finding of infringement under the doctrine of equivalents. – slip op at 4
Likewise, a finding of infringement under the doctrine of equivalents would impermissibly vitiate claim limitations. Here, Claim 1 requires separate center and end sections that are made of different materials; finding equivalence with a single strap lacking separate sections and different materials would impermissibly vitiate this limitation. -- Id.
Back to Philips • The Holmes reference disclosed lamps with a halogen concentration of 5 x 10 -4 to 5 x 10 -2 <<mu>>mol/mm 3
[T]he asserted equivalents have halogen concentrations that lie below the range disclosed by the Holmes reference, there has been no showing that the lamps disclosed in Holmes meet all the other limitations of the claim . . . Holmes therefore does not foreclose the application of the doctrine of equivalents to lamps with halogen concentrations between 1 x 10 -4 and 5 x 10 -4 <<mu>>mol/mm 3.
Prosecution History Estoppel • Recap Doctrine of Equivalents (DOE) • Warner-Jenkinson: presumption that part of claim coverage is surrendered when applicant amends claim • Festo case • Post-Festo developments
“Range of Equivalents” Literal Claim Scope Infringement under DOE ?
Warner-Jenkinson • DOE Survives challenge • Presumption in cases of claim amendment: amendment made for reasons related to patentability; prosecution history estoppel applies
Original Claim Scope Narrowed Scope, after amend-ment
United States Patent 4,354,125 Stoll October 12, 1982 Magnetically coupled arrangement for a driving and a driven member The invention is concerned with a magnetically coupled arrangement for a driving and a driven member, which arrangement is operable by a pressure medium and is used in a conveying system. A slidable piston (16) within a tube (10) has an arrangement of annular magnets (20) provided at each end with sealing and sliding members (24, 26). A driven assembly (18) slidable on the outer surface of the tube (10) has an arrangement of annular magnets (32) corresponding to the magnets (20) and provided at each end with a sliding ring (44). The members (24, 26, 44) prevent ingress of foreign bodies to the magnet locations, and consequently enable the spacing between the magnets and the tube (10) to be very small. A good magnetic coupling is achieved resulting in effective transmission of power. Several pistons (16) abutting one another can be used for conveying heavy loads. Inventors: Stoll; Kurt (Lenzhalde 72, D-7300 Esslingen, DE) Appl. No.: 153999Filed: May 28, 1980
Prosecution History • Amendments – p. 944 • What limitations did they add? • Why were they made?
Fed Cir opinion • Two aspects • Prosecution history estoppel (PHE) applies to all amendments, whatever the basis • PHE represents a complete bar to all equivalents of amended claim
Federal Circuit opinion • 11 – 1 on amendment rationale issue • 8-4 on “complete bar” approach
1st point: “related to patentability” • Enablement estoppel is now a reality • P. 949 • What would a “truly cosmetic” amendment look like?
2nd Point: The 3-Part Test • Supreme Court rejects “complete bar”
Original Claim Scope Narrowed Scope, after amend-ment
Original Claim Scope X Narrowed Scope, after amend-ment Embodi-ment “X”: Can DOE cover?
X Narrowed Scope, after amend-ment Embodi-ment “X”: Can DOE cover?
“Estoppel” idea • Who is estopped from what? • Why? • Like other legal instances of estoppel concept?
2nd Point: The 3-Part Test • P 952 •  Unforeseeable equivalents •  Amendment bears “tangential relation” to equivalent •  “Some other reason” -- expectations
The 3-Part Test • P 952 •  Unforeseeable equivalents •  Amendment bears “tangential relation” to equivalent •  “Some other reason” -- expectations
Hughes Aircraft Co. v. United States, 717 F.2d. 1351, 1362-63 (Fed. Cir. 1983). • Later developed technology to use onboard computers to control satellite orientation is equivalent to receive signals form the satellite and use the computers on earth to control the orientation of the satellite)
Hughes VIII 1998 • Because Hughes Aircraft Co. v. United States , 717 F.2d 1351, 219 USPQ 473 (Fed. Cir. 1983) ( Hughes VII ) satisfies the legal requirements announced in Warner-Jenkinson , we affirm.