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Journal
Decision Tree for Determining Prosecution History Estoppel
In 2002, the United States Supreme Court decided Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 122 S.Ct. 1831 (2002) (“ Festo VIII”) in which the Court reversed the decision by the Federal Circuit that an amendment made to a claim limitation categorically prohibits the use of the doctrine of equivalents with respect to that limitation. Unlike Supreme Court non-patent cases where the holding and reasoning is of great importance in predicting how lower courts will construe the holding, in patent cases only the Federal Circuit applies the Supreme Court precedent. The manner in which the Federal Circuit does so becomes the definitive holding except in the unlikely circumstance that the same issue is presented to the Supreme Court in a new case. Thus, for all practical purposes, the decision of the Federal Circuit on remand constitutes the real holding. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 344 F.3d 1359 (Fed. Cir. 2003) (“ Festo IX”).
Festo IX must also be applied within the framework of Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040 (1997) where there were issues relating to prosecution history estoppel and doctrine of equivalents that, in the words of Judge Lourie in Festo IX, raised questions regarding these doctrines that “remain in the wake of” the Supreme Court decision in Warner-Jenkinson.
In Festo IX, Judge Lourie made clear that the Supreme Court decision in Festo VIII did not disturb significant portions of its earlier en banc holdings. Despite several rejections by the Supreme Court of the Federal Circuit death proclamations of the doctrine of equivalents within the last ten years, Judge Lourie made it clear that it is the Federal Circuit that determines patent law in the United States and they intend to continue to do so. The “undisturbed” holdings in Festo VII, according to Judge Lourie, included: (1) that a “narrowing amendment” may include in addition to prior art rejections, rejections that are based on 35 U.S.C. § 112; (2) a “voluntary” amendment may give rise to prosecution history estoppel; and (3) the Warner-Jenkinson presumption which treats a narrowing amendment as having been made for a substantial reason related to patentability when no reason for the amendment is given, creates a presumption that such amendment surrenders all territory between the original and amended claim limitations.
Thus, to determine whether any remnant of the doctrine of equivalents survives the estoppel trap requires decision-making as set forth in the attached diagram. In addition to the relatively simple Decision Tree to arrive at a conclusion as to whether the doctrine of equivalents may be available, Judge Lourie in Festo IX also established, sans Supreme Court guidance, whether the judge or jury shall decide the issue, and in either event, what evidence is admissible. The Decision Tree reflects the latter determination, indicating by color what is the permissible evidentiary basis. It will not surprise those familiar with the Federal Circuit’s view of the doctrine of equivalents that all questions in this area are matters of law and like nearly all other patent questions, will be resolved de novo by the Federal Circuit.
Decision 1 is a determination of whether a narrowing amendment has been made. While that may appear simple on its face, we learn in Ericsson, Inc. v. Harris Corp., 352 F.3d 1369 (2003), in an opinion again by Judge Lourie, that amending one portion of what would ordinarily be understood as a “limitation”, may not constitute a “narrowing amendment” as to other language addressing what appears to be the same limitation and therefore Festo IX is inapplicable. Id. at 1375. Judge Newman commented in her dissent in Ericsson that despite the fact that she did not agree with portions of the Festo IX decision, she thought it ill-advised that such new precedent should be immediately emasculated since “it can only mislead and confuse the public”. Id. at 1380. On the other hand, most patent claims draftspersons would be surprised to learn that an independent claim with elements A, B, C and D on which there is a dependent claim adding element E, will give rise to an estoppel if the independent claim is cancelled and the dependent claim is re-written in independent form. Honeywell International, Inc. v. Hamilton Sunstrand Corp., 370 F.3d 1131, 1140-42 (Fed. Cir. 2004). The estoppel will apply to element E and there is a presumption that all of the subject matter between the independent claim, and element E, is surrendered. Assuming that the presumption can be overcome, as discussed below, element E will still be accorded only limited access to the doctrine of equivalents, though no change or amendment was ever made during prosecution to element E. This strange result can be explained by the following manifestation of paranoia: “Astute practitioners could, through clever claim drafting, elect to treat most, if not all, amendments as merely adding new claim limitations rather than narrowing preexisting ones.” ( Id. at 1141) Although on the one hand Judge Rader is fond of reminding patent claim drafters that they must be seers of foreseeability, Johnson & Johnston Assoc. Inc. v. R.E. Service Co., Inc., 285 F.3d 1046, 1057 (Fed. Cir. 2002) (J. Rader, concurring), there is apparently a limit as to how astute the draftsperson should be. Thus, except in cases where a limitation is exceedingly short and clearly the key words or phrase in the limitation have been amended, there appears to be room for argument that a narrowing amendment was not made. Of course if there is no amendment there is no estoppel. Hope springs eternal.
In the Decision 2 step, assuming an amendment was made, whether an estoppel applies will depend upon whether a reason was given for the amendment which is a substantial one relating to patentability. In a substep (Decision 2A), if no reason is given, the amendment is presumed to be of substance although this may be rebutted. Clearly if an amendment is made together with an argument that the amended claim clears the prior art, there is no doubt that it relates to patentability. Similarly, if the rejection is based on a failure to comply with 35 U.S.C. § 112, for example the lack of an antecedent, the reason is a substantial one relating to patentability. It will certainly be a tough go to deny that an amendment was made without regard to patentability in the vast majority of circumstances. As for amendments which are unaccompanied by a reason, the draftsman-prosecutor gets what he or she deserves.
While Festo IX does not explicitly state that Decisions I through 2A are matters of law and should be decided solely based on the prosecution history, earlier precedent makes it clear that these questions are purely legal based on a documentary evidentiary record.
Decision 3 addresses the question on which the Supreme Court reversed the Federal Circuit: What is the scope of the subject matter surrendered? If it is not everything, then the next best halter on the doctrine of equivalents is a presumption that all subject matter is surrendered as indicated in Decision 4. Although the presumption that all of the territory has been surrendered is rebuttable, it is rebuttable solely on three bases. Since the presumption is of course a matter of law, the patentee shoulders the burden of proof with respect to the rebuttals.
Decision 5, the first rebuttal, would appear to be the best hope for the patentee to overcome the presumption. It focuses on the accused device and whether in applying the equivalents, such equivalent words would have been unforeseeable to one of ordinary skill in the art at the time of the amendment. Again, Judge Lourie makes clear that not only will the determination of whether a presumption of surrender has arisen, Decision Steps 1 - 2A, but whether “it has been rebutted are questions of law for the court, not a jury to decide.” Festo IX, 344 F.3d at 1368. Nevertheless, the rebuttal question and its characterization as a matter of pure law, presented the court with a pause, albeit a short one, because the rebuttal is likely to require resolution of underlying factual issues. That problem of a potential interference by a jury in deciding patent cases was easily deflected by reference to the fact that the resolution of factual issues underlying a legal question may properly be decided by the court, citing its own Markman v. Westview Instruments, Inc., 52 F.3d 967, 980-81 (Fed. Cir. 1995). In other words, the most controversial aspect of the Markman case -- that all factual issues are subsumed in the legal decision-making -- has now been extended to the facts underlying the application of prosecution history estoppel. As in Markman, there is no explanation for why patentability, a question of law, is based on factual findings that remain for consideration by a jury or judge acting as a fact finder, but other questions of law do not. Still more curious is Judge Lourie’s holding that the rebuttal criteria are questions of law, including the first rebuttal based on foreseeability, while in his concurring opinion in the Johnson & Johnston case, he stated in a concurring opinion: “Foreseeability is not solely a question of law.” (285 F.3d at 1063) While not perfectly inconsistent, given the enigmatic statement that a judge can make factual findings underlying a question of law, Judge Lourie made clear in Johnson & Johnston that foreseeability is not an issue that may be decided on summary judgment. ( Id.)
The foreseeability rebuttal, or lack thereof, potentially a quagmire is somewhat relieved by the court’s guideline that if the equivalent “represents later-developed technology . . . or technology that was not known in the relevant art, then it would not have been foreseeable.” 344 F.3d at 1369. Addressing the converse, old technology is “not always foreseeable” but would be “more likely” to have been foreseeable. Of some perhaps additional comfort to the patentee, because of the “objective” nature of unforeseeability, the court may hear expert testimony and consider extrinsic evidence relevant to the factual inquiries of the state of the art and the understanding of a person of ordinary skill in the art at the time of the amendment. Thus, one can foresee that relying upon the first rebuttal may require an evidentiary hearing or at least a full factual exposition of the question of foreseeability, likely in response to a motion for summary judgment by the accused infringer after the patentee has committed to reliance upon the doctrine of equivalents, arguing that the doctrine is unavailable because of prosecution history estoppel. If nothing else, the first criterion will at least bring into play Judge Rader’s long-suffering plea for foreseeability. 285 F.3d at 1057.
In Decision 6, the second opportunity to rebut is to argue that the amendment bore no more than a tangential relationship to the equivalent. At first blush, this appears to be a reiteration of the Decision 2 question -- whether the amendment was for a substantial reason relating to patentability. But that is clearly not the case as Judge Lourie makes clear: “[W]hether the reason for the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent.” Id. at 1369. The focus is on the accused device or more specifically, the identification by the patentee of what element of the accused device is equivalent to the non-reading literal language. Once more we are provided with a guideline. If an amendment is made to avoid prior art that “contains the equivalent” in question it cannot be tangential for obvious reasons. That seems to be no more than a restatement of Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 683 (Fed. Cir. 1990) which has long held that one cannot sweep into the doctrine of equivalents structure that was manifestly in the prior art. Indeed it would appear that Wilson Sporting Goods goes further because if the patentee is attempting to cover a prior art equivalent, it is irrelevant as to whether an amendment was made and the whole prosecution history estoppel exercise is unnecessary. In any event, unlike the first criterion for rebuttal, here the patentee cannot rely upon an expert or extrinsic evidence -- proof must emanate solely from the prosecution history. The reason is the familiar reliance on the public notice function rationale for segregating intrinsic from extrinsic evidence that has become a talisman of the current Federal Circuit Court’s decision making. Curiously, Judge Lourie does appear to suggest that testimony may be required from those skilled in the art as to “the interpretation of that [prosecution history] record.” 344 F.3d at 1370. That appears to be an invitation for expert testimony from a patent attorney, something largely frowned upon by most current District Court judges. We shall have to wait and see how tangentialness can be proved.
The third criterion, Decision 7, involves that standard Supreme Court mea culpa of fallibility -- there may be an “other reason” which it may have overlooked. The “other reason” is somewhat circumscribed however by limiting that reason to that which could not “reasonably be expected to have described the equivalent”. Judge Lourie then makes the interesting observation that this rebuttal category “while vague, must be a narrow one”. Id. at 1370. It is somewhat difficult to understand how a category of reason is narrow, when its boundaries are vague. In essence, the Federal Circuit is re-closing the door opened by the Supreme Court in this open-ended third rebuttal possibility. Judge Lourie then provides a suggestion as to what such “other reason” may be, stating that it could be the shortcomings of language. Id. That is a perfectly reasonable interpretation since the inadequacy of language in describing technical innovations impressed Justice Kennedy in Festo VIII where he called attention to the epistemological limits of language on two occasions. 122 S.Ct. 1837, 1839. Suffice it to say that it will have to be a major invention to have outdistanced the dictionaries to the extent that it placed the patentee at a loss for words. Apparently the court has something in mind like the struggle of Hooke and Newton in arriving at a word suitable to explain the attraction of physical objects to one another. Once more the court cautions that this criterion will not be available if the alleged equivalent is in the prior art. That of course reiterates the limitation of the second criterion and appears to be equally redundant given the Wilson Sporting Goods holding. Finally, in some manner or another, that shortcoming of language has to be found in the prosecution history record itself. “When at all possible, determination of the third rebuttal criterion should also be limited to the prosecution history record. ( Id.) However, the court leaves the door open to a consideration of other evidence but eschews deciding that question.
Summary
It remains to be seen how many additional times it will be necessary for the Supreme Court to rescue the doctrine of equivalents from the ravages by the Federal Circuit. With each successive opinion, the Supreme Court clings to precedent but each time the whittling -- with a halberd -- by the Federal Circuit, takes a toll on a doctrine that has been eclipsed by the public notice function. It is predicted that the most recent assault by the Federal Circuit -- prosecution disclaimer -- will make unnecessary the detailed analysis engendered by Festo IX. For the moment, however uphill it may be to overcome presumptions in general, it will be like threading a needle to establish a rebuttal that defeats the estoppel and permits the reliance upon the doctrine of equivalents.
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