Amicus Curiae Brief — Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Supreme Court, U.S.

FILED

AUS 3/ 200 y ie

| No. 00-1543

IN THE =

Supreme Court of the United States

FESTO CORPORATION,

Petitioner,

Vv.

SHOKETSU KINZOKU KOoGYO KABUSHIKI Co., LTD., A/K/A

SMC CORPORATION AND SMC PNEUMATICS, INC.,

Respondents.

On Writ of Certiorari to the United States

Court of Appeals for the Federal Circuit

BRIEF FOR AMICUS CURIAE

IN SUPPORT OF NEITHER PARTY

ON BEHALF OF

THE PATENT, TRADEMARK, & COPYRIGHT SECTION

OF THE BAR ASSOCIATION OF THE DISTRICT OF COLUMBIA

William P. Atkins

Pillsbury Winthrop, LLP

1600 Tysons Boulevard

McLean, Virginia 22102

(703) 905-2000

Attorney for Amicus Curiae

EE

aa

STATEMENT OF AMICUS CURIAE

SUMMARY OF THE ARGUMENT

PHE Applies To What and Why

Conclusion

Page

Cases

ACLARA Biosciences, Inc. v. Caliper Technologies Corp.,

125 F. Supp. 2d 391 (N.D. Cal. 2000)............. 8, 10, 14, 15

Brookes v. Fiske,

$6 U.S. (15 Hiow.) 223 CRBBBD cccesssssrssasssssenntemnesenniacnmeia 9

Creo Products Inc. v. Presstek, Inc.,

2001 WL 637397 (D. Del. 2001) .........ccccesceeeeeeeee 8, 10, 15

Dawn Equip. Co. v. Kentucky Farms Inc.,

140 F.3d 1009 (Fed. Cir. 1998)..........:ccccccsssssscessesseeeeeenees 13

Eames v. Godfrey,

68 U.S. (1 Wall.) 78 (1864)......cccccorcessccevscescecscesesocescsseseceses 9

Ethicon Endo-Surgery, Inc. v. United

States Surgical Corp.,

149 F.3d 1309 (Fed. Cir. 1998).........cccccrcccsccssssesescseseeses 13

Evans v. Eaton,

16 U.S. (1 Wheat.) 454 (1818)... cceseeeeeteeeeeeneeeee 9

Festo Corp. v. Shoketsu Kinzoku Kogyo

Kabushiki Co.,

234 F.3d 558 (Fed. Cir. 2000)............ccsccsseeseeeseeeees passim

Goodyear Dental Vulcanite Co. v. Davis,

9B UB. ZEB (GGG ccccccccccosceseeisenstiniectiintininntnmnianiaaa 10

Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,

$29 US. GB6 (BOSD) ..cccocessesossnecnnenssesntintepsniniemmnmaaniaal 14

Lemelson v. United States,

752 FBG 2SSB (3GBS) cocccccecccsssesscescsnnsinnensensmiaaaan 12

Lockheed Martin Corp.,

234 F.3d 1314 (Fed. Cir. 2001)..........:ccccesseeeseeseees 7, 14, 15

Pennwalt Corp. v. Durand-Wayland, Inc.,

C33 FIG FSU (IGS 7) accccececessescstnsesteesseesssitintnnesamiiaaaama 13

Perkin-Elmer Corp. v. Westinghouse Electric Corp.,

822 F.2d 1528 (Fed Cir. 1987)............cscssscssscsscsorescssseeees 12

Prouty v. Ruggles, 41 U.S. (1 Pet.) 336 (1842)..........ccccsceeeee 9

il

Radio Steel & Mfg. Co. v. MTD Prods., Inc.,

ET ee 12

Sargent v. Hall Safe & Lock Co.,

iia cstntndnrnccinncnatnttnctensncssescsssesaceseces ll

Sexant Avionique, S.A. v. Analog Devices, Inc.,

Se 13

Silsby v. Foote,

| 9

Union Water-Meter Co. v. Desper,

Be Ses CB GIUED BE COTO cccccccccccscesccsccccceccscoscescecesces 10

Vance v. Campbell,

66 U.S. (1 Black) 427 (1862) ...........ccccccccccsesseeseeeeneees 10, 13

Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,

ae 6

Wollensak v. Sargent,

ices direrncsentcncnenestneneeneesnscanssresene 11

Statutes

35 U.S.C. § 112, third paragraph .0..0............:.cccccceeeseeeeseenees 12

35 U.S.C. § 112, fourth paragraph .................ccccccceeeeeees 11,12

35 U.S.C. § 112, fifth paragrag ...............cscccscecsersersorersesees 12

34 U.S. C § 112, sixth paragraph ....0....0.......ccccccceceeceeeeeenees 11

Patent Act, ch. 7, § 2, 1 Stat. 109-12 (1790) .........cccccccccseseees 9

Patent Act, ch. 11, § 3, 1 Stat. 318-23, (1793) ........cccccccceceeee 9

Patent Act, Ch. 230, § 26, 16 Stat. 198-217 (1870).............. 10

Patent Act, ch. 357, § 6, 5 Stat. 117 (1836) ...........ccccccccceseeee 9

Pub. L. No. 89-83 79 Stat. 259 (1965) ..........cccccccceseeseeeeseeees 11

EE |

STATEMENT OF AMICUS CURIAE

The Bar Association of the District of Columbia is a

non-profit organization that has a Patent, Trademark, &

developments in both the law and practice. This section

includes members of the bar who specialize in intellectual

property law, with an emphasis on patent law. Members

frequently represent patent applicants, patent owners, and

accused patent infringers in various matters, and are

concerned with the use and effect of prosecution history

estoppel on claim interpretation in patent infringement.

Other than an interest in seeking consistent, precise,

and well-founded interpretations of patent law, the Patent,

Trademark & Copyright Section of the Bar Association of

the District of Columbia supports neither party, and

respectfully requests that this Court consider the arguments

or er ar

' None of the parties or their counsel has contributed either substantively

or monetarily to the preparation of this brief. Only the Bar Association

of the District of Columbia and its members have made a monetary

contribution to the creation, preparation, and submission of this brief.

Written consent to the filing of this brief has been granted by all parties

and is filed herewith. Pursuant to Sup. Ct. R. 37.6, the author also

acknowledges and appreciates the assistance of Danie! E. Yonan, Dale S.

Lazar, Kevin T. Kramer, and Emily T. Bell.

l

SUMMARY OF ARGUMENT

If an applicant amends a patent claim by adding the

term “red” to modify the term “wagon,” for reasons relating

to patentability, is the range of equivalents for wagons barred

or just the range of equivalents for the color of the wagons?

In other words, to what claim terms does prosecution history

estoppel (“PHE”) apply?

In the Stoll patert at issue in this case, the sealing

rings were amended from sealing “means” to sealing “rings,”

both with modifying claim terms. Should PHE apply to the

term “sealing rings,” or just the term “rings” or to “sealing

rings” and its modifying claim terms?

The Festo decision held that the doctrine of

equivalents is completely barred on “limitations” which is

then defined as merely” claim language.”? Patent claim

terms have been historically “elements” and “limitations.”

This lack of clarity, as to what claim terms should be

subjected to PHE, has become the focus of litigants and,

even the Federal Circuit, as courts attempt the difficult task

of applying Festo’s PHE analysis to various patent claim

terms. The bright line objective of Festo has unfortunately

created an entirely new battleground — which claim terms

will be subjected to PHE and why.

This brief attempts to guide the Court in resolving

this issue because clarification of the scope and extent of

PHE will help the resolution of all doctrine of equivalents

cases that are based upon PHE. At the very least, the

consistent use of precise nomenclature will provide clarity as

to the scope and extent of PHE so that, in turn, the scope and

2 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234

F.3d 558, 569 (Fed. Cir. 2000) (en banc).

2

extent of equivalents and infringement under the doctrine of

equivalents can more readily be evaluated.

ARGUMENT

The objective of this brief is to help the Court

appreciate the inherent problems in the use of i

nomenclature for claim terms during an analysis of PHE.

This amicus brief looks first to one of the “elements” found

in one of the claims at issue and then, using the historical

extent of the application of PHE on patent claims.

1. The Patent Claims At Issue

The following table compares inventor Stoll’s

originally filed claims 1 and 4 with issued claim 1.

tte pete aoe pte snag gp clo

3 Festo, 234 F.3d at 587-91.

3

Original Claim 1 Issued Claim 1(Claim 13)

a piston which is slidable in | said piston further including

said tubular part and which | plural guide ring means

has sealing means at each encircling said piston body

end for siping [sic wiping] | and slidingly engaging said

engagement with an internal | internal wall and first sealing

surface of the tubular part rings located axially outside

and so as to forma seal for | said guide rings for wiping

the pressure medium‘ said internal wall as said

piston moves along said tube

Original Claim 4 to thereby cause any

se impurities that may be

: present in said tube to be

Wherein the sealing means pushed along said tube so

of the piston comprise that said first annular

sealing rings and the piston | sagnets will be free of

is provided with sliding interference from said

rings.*

The claim language “sealing rings” and the words following

that term, in issued claim 1, can be parsed in many ways, but

the pertinent terms include the following:

1. Sealing,

2. Rings,

3. Located axia.'y outside said guide rings, and

4. For wiping sard internal wall as said piston moves

along said tube to thereby cause any impu...ies

4 Originally filed claim 1 on page 11 of U.S. Patent Application

No. 06/153,999, which matured into the Stoll patent.

5 Id. at page 12.

6 U.S. Patent No. 4,354,125.

4

that may be present in said tube to be pushed

along said tube so that said first annular magnets

will be free of interference from said impurities.

The first question in the Festo analysis is what was amended.

The “sealing means” element in the originally filed claim 1

was a statutorily defined means-plus-function element under

35 U.S.C. § 112, sixth paragraph. Claims 1 and 4 from the

original application were cancelled, however, and new claim

13 was submitted.

A review of the prosecution history reveals that three

of the four terms were amended. The term “sealing” was not

amended, but it was part of the change from “sealing means

for .. .” to “sealing rings.” The term “rings” was originally

“means for .. .,” and the Festo opinion speaks about the

narrowing aspect of this term.’ The term “located axially

outside said guide rings” was newly added with the “guide

rings” noted in original claim 4 as being “near the sealing

rings.” Finally, the genesis for the fourth term set forth

above for cleaning impurities out of the tube, appears to be

from the “wiping engagement” function in original claim 1.

Thus, this language was also added to issued claim 1. Again,

all of these claim terms were amended except “sealing.”

With this in mind, does the PHE apply to “sealing

rings” alone and not the claim term “sealing?” This is a

subtle, but critical distinction because it determines the very

foundation for both the doctrine of equivalents and any

infringement analysis that follows. Consider the effect of

having the doctrine of equivalents available for the term

“sealing” but not for the term “rings.” If “rings” had no

7 Festo, 234 F.3d at 589 (“a claim amendment which replaces

structure narrows the scope of the claim”). “Rings” was also recited in

original dependent claim 4.

5

equivalents, the accused infringer with one ring instead of

two could forcefully argue that one is not equal to two and

that a single ring can never be an equivalent of the claimed

“rings.”

2. Festo v. Warner-Jenkinson — PHF Differences

If an amendment was voluntary and related to

patentability, as it was with Warner-Jenkinson’s addition of

a lower end range of 6.0 pH to its claim, it “would bar the

application of the doctrine of equivalents as to that

[amended] element.”* In the Festo case, however, the

Federal Circuit held that the application of the doctrine of

equivalents is completely barred as to the amended claim

limitation, where a limitation was defined only as “claim

language.”? The difference in terminology used by this

Court and the Federal Circuit is symptomatic of the

confusion regarding the proper scope and extent of PHE.

Furthermore, this sweeping change of terminology by the

Federal Circuit to patent claims only having “limitations”

and not “elements” is problematic because there is a long

and contused history of both terms.

Cases decided after the Federal Circuit’s Festo

decision provide ample evidence of the mischief caused by

not precisely articulating what should be included in the

scope and extent of the PHE, and what should not.

8 Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.

17, 33 (1997) (emphasis added).

9 Festo, 234 F.2d at 564 n.1. In the Festo en banc decision, the

court decided that it is “preferable to use the term ‘limitation’ when

referring to claim language and the term ‘element’ when referring to the

accused device,” but “because the en banc questions use the term

‘element,”” the Federal Circuit used the term “element” instead of

“limitation” in its decision.

3. Post-Festo Cases Evidence The Problem

Consider the Federal Circuit’s own foray into this

post-Festo area in the recent Lockheed case.'° In the

prosecution of the application that led to issuance of the

patent-in-suit in Lockheed, the applicant twice amended

claim terms in phrase “b” of the original application.

The pertinent language of [originally filed]

limitation [b] stated, ‘means for rotating said

wheel in accordance with a predetermined

sinusoidal variation.” . . . the applicant

amended limitation [b] to state, ‘means for

rotating said wheel in accordance with a

predetermined rate schedule which varies

sinusoidally over the orbit.’ The applicant

again amended the claim by adding the

phrase ‘at the orbital frequency of the

satellite.”!!

Applying PHE under the Festo “limitation” analysis, the

Federal Circuit held that “prosecution history estoppel [bars]

the application of the doctrine of equivalents’ to limitation

[b].""2 The Federal Circuit determined that the “first

amendment wholly replaced the phrase ‘sinusoidal

variation” and therefore held that this “amendment

illustrates that the entire limitation of limitation [b] was

changed, not that a completely separate limitation, unrelated

to sinusoidal variation, was added.”'> A more precise

analysis could be that “sinusoidal variation” was a limitation

10 Lockheed Martin Corp. v. Space Systems/Loral, Inc., 249

F.3d 1314 (Fed. Cir. 2001)(en banc request denied).

1! Jd. at 1326 (mote that the court adopted the use of the term

limitation instead of element in accordance with the Festo decision)

(quoting Festo, 234 F.3d at 586).

12 Jd. at 1327 (quoting Festo, 234 F.3d at 586).

13 Jd. at 1327.

modifying the means-plus-function element of “means for

rotating said wheel” and then dealt with as a separate and

distinct claim term. Alternatively, because it would be a

“limitation” that modifies an “element,” PHE applicable to it

could affect the modified element. The “sinusoidal

variation” could also be considered a separate element and

therefore, PHE applicable to it does not affect the doctrine of

equivalents analysis of the “means for rotating said wheel.”

Further examples of courts wrestling with the

application of PHE to claim terms after Festo include the

ACLARA and Creo cases.'* In ACLARA, one element was

found to have three limitations, and the applicant did not

amend the limitation at issue. It was decided that PHE could

not apply to that unamended limitation.'> Thus, the court

took a more limited approach regarding the scope of PHE

based on a more precise parsing of the claim terms. In Creo,

the court stated that “[r]ather than woodenly applying Festo,

the court will adopt the more nuanced approach” of

ACLARA.'* “Simply put, the issue in this [Creo] case is. . .

whether the Festo bar covers implicit changes in a

limitation.”'7 This is the very issue that can be corrected

with considered forethought.

4. “ ” dA“ a

History

An understanding of the historical treatment and

terminology applied to claim terms may provide some

guidance to the Court in considering the question raised by

14 4ACLARA Biosciences, Inc. v. Caliper Technologies Corp.,

125 F. Supp. 2d 391 (N.D. Cal. 2000); Creo Products Inc. v. Presstek,

Inc., 2001 WL 637397 (D. Del. 2001).

1S ACLARA, 125 F. Supp. 2d at 402.

16 Creo, 2001 WL 637397, at *9.

17 Jd. at *8.

this brief and the facts of Festo. Throughout the history of

patent law in the United States, this Court, the lower courts,

and Congress have used the words “elements” and

“limitations” to refer to terms in patent claims.

Our research has taken us from the Patent Act of

1790 to a line of post-Festo cases. Beginning in 1790, a

patent was required to have merely a written description of

the invention.'* Three years later, the written description

was required to include “full, clear and exact terms ... [to]

enable any person skilled in the art ... to make, compound,

and use the same.”!9 In 1818, this Court introduced, but did

not adopt, the term “elements.”2° In 1836, the Jaw was

amended to require that the written description of a patent

include claims,?! and those claims were composed of all the

parts mentioned in the combination. These “parts”?? of a

18 Patent Act, ch. 7, § 2, 1 Stat. 109-12 (1790) (a description

that was so particular “as not only to distinguish the invention or

discovery from other things before known and used, but also to enable a

workman or other person skilled in the art to manufacture” the

invention).

19 Patent Act, ch. 11, § 3, 1 Stat. 318-23 (1793).

20 Evans v. Eaton, 16 U.S. (1 Wheat.) 454, 485 (1818) (“{t}he

grant [of the patent] is not for the parts [of the invention], because it is

for the whole; not in their rudiments or elements ... but for the peculiar

properties, the new and useful practical results from each machine, and

the vast improvements from their combination in this art”) (emphasis

added).

2! Patent Act, ch. 357, § 6, 5 Stat. 117 (1836) (“[inventor must]

particularly specify and point out the part, improvement, or combination,

which he claims as his own invention or discovery”).

22 Silsby v. Foote, 55 U.S. (1 How.) 218, 224 (1852); Prouty v.

Ruggles, 41 U.S. (1 Pet.) 336, 341 (1842) (“this combination, composed

of all the parts mentioned in the specification, and arranged with

reference to each other, and to other parts of the plough, in the manner

therein described is stated to be the improvement, and is the thing

patented”) (emphasis added); Brookes v. Fiske, 56 U.S. (1 How.) 211,

220 (1853) (“[t]o imfringe, Norcross must use all the parts of

Woodworth’s combination”) (emphasis added); Eames v. Godfrey, 68

9

claim were broad portions of the combinations.??> In 1862,

this Court referred to a distinct, specific part of a

combination as an “element” and, if one “element” w

surrendered, “the thing claimed disappears.” 24 In 1870, the

statutory claiming requirement was refined to require that an

applicant “particularly point out and distinctly claim the part,

improvement, or combination which he claimed as his

invention or discovery.”5

In 1879, this Court confirmed that a patent claim is

comprised of “elements” or “parts.”26 The next year, this

Court found that there were “necessary elements of the

invention.”?’

Our research indicates that the first time the word

“limitation” was applied to a patent claim term was by this

Court in 1885. In that year, in the Sargent case, this Court

U.S. (1 Wall.) 78, 79 (1864) (“that there is no infringement of a patent

which claims mechanical powers in combination unless all the parts have

been substantially used”) (emphasis added); Union Water-Meter Co. v.

Desper, 101 U.S. 332, 335-37 (1879) (“[i}t is a well-known doctrine of

patent law, that the claim of a combination is not infringed if any of the

material parts of the combination are omitted ... Our law requires the

patentee to specify particularly what he claims to be new, and if he

claims a combination of certain elements or parts, we cannot declare that

any one of these elements is immaterial. The patentee makes them all

material by the restricted form of his claim”) (emphasis added).

23 Union Water-Meter Co. v. Desper, 101 U.S. 332 (1879).

24 Vance v. Campbell, 66 U.S. (1 Black) 427, 429 (1862) (“{iJf

one of the elements is given up, the thing claimed disappears”).

25 Patent Act, Ch. 230, § 26, 16 Stat. 198-217 (1870).

26 Union Water-Meter Co. v. Desper., 101 U.S. 332, 337 (1879)

(“Our law requires the patentee to specify particularly what he claims to

be new, and if he claims a combination of certain elements or parts, we

cannot declare that any one of these elements is immaterial”).

27 Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 224

(1880) (“{i}t is therefore essential to a correct determination of this case

to consider what was the material, made by the patentee [sic] an element

of his invention”).

10

confirmed that patent claims included “elements” but, for the

first time, opined on “limitations” within patent claims.”* In

1894, this Court provided that a claim containing references

to the elements included could not be broadened to include

additional elements.?9

The understanding that claims were comprised of

“elements” was reinforced by the Patent Act of 1952, which

stated in part, “an element in a claim for a combination may

be expressed as a means or step for performing a specified

function.”2° This statute allowed any element to be

expressed in means-plus-function type language.

Contrary to the “element” claim term reference in the

1952 Patent Act, the 1965 Patent Act included the undefined

word “limitations,” and today the statute continues as 35

U.S.C. § 112, fourth paragraph which states in pertinent part:

“A claim in dependent form shall be construed to incorporate

by reference all the limitations of the claim to which it

refers)”.3! The legislative history reveals only that the word

“limitations” was added to the patent statute in the context of

defining independent and dependent claims.** The 1975

Patent Act amended 35 U.S.C. § 112 yet again and included

more language regarding limitations and involved multiple

28 Sargent v. Hall Safe & Lock Co., 114 U.S. 63, 86-86 (1885).

29 See Wollensak v. Sargent, 151 U.S. 221, 226-27 (1894) (a

specific combination claim, containing letters or reference to the

elements included, cannot be broadened to include additional elements).

30 “An element in a claim for a combination may be expressed

as a means or step for performing a specified function without the recital

of structure, material, or acts in support thereof, and such claim shall be

construed to cover the corresponding structure, material, or acts

described in the specification and equivalents thereof.” 35 U.S.C. § 112

sixth paragraph.

31 35 U.S.C. § 112 paragraph 4 (emphasis added).

32 Pub. L. No. 89-83, 79 Stat. 259 (1965).

11

dependent claims.?> The addition of these two limitations-

containing paragraphs to § 112 stand in stark contrast to

paragraph 6 of the 1952 Act, which contains the element

term discussed above.

In 1983, the Federal Circuit remarked that “[flor a

patent claim to have been anticipated under 35 U.S.C. § 102,

all the elements in the claim ... must have been disclosed in

a single prior art reference or device.”*4 In 1985, the Federal

Circuit again emphasized “elements” in infringement

analysis, providing that “[iJt is also well settled that each

element of a claim is material and essential, and that in order

for a court to find infringement, the plaintiff must show the

presence of every element or its substantial equivalent in the

accused device.”35 In 1987, the Federal Circuit again

embraced elements as components of a device (either in the

accused device or embodied by the invention).*° That same

year, however, the Federal Circuit also used “limitations”

33 35 U.S.C. § 112, third paragraph (“A claim may be written in

independent or, if the nature of the case admits, in dependent or multiple

dependent form”); 35 U.S.C. § 112, fourth paragraph (“Subject to the

following paragraph, a claim in dependent form shall contain a reference

to a claim previously set forth and then specify a further limitation of the

subject matter claimed. A claim in dependent form shall be construed to

incorporate by reference all the limitations of the claim to which is

refers”); 35 U.S.C. § 112, fifth paragraph (“A claim in multiple

dependent form shall contain a reference, in the alternative only, to more

than one previously set forth and then specify a further limitation of the

subject matter claimed. A multiple dependent claim shall not serve as a

basis for any other multiple dependent claim. A multiple dependent

claim shall be construed to incorporate by reference all the limitations of

the particular claim in relation to which it is being considered”)

(emphasis added).

34 Radio Steel & Mfg. Co. v. MTD Prods., Inc., 731 F.2d 840,

845 (1984) (emphasis added).

35 Lemelson v. United States, 752 F.2d 1538, 1551 (1985).

36 Perkin-Elmer Corp. v. Westinghouse Electric Corp., 822 F.2d

1528, 1533 n.9 (Fed. Cir. 1987) (emphasis added).

12

when referring to what was set forth in the claims.*” And in

1999, the Federal Circuit opined that “an accused device that

does not literally infringe a claim may still infringe under the

doctrine of equivalents if each limitation of the claim is met

in the accused device either literally or equivalently.”

The understanding that claims consist of elements is

codified in 37 C.F.R. § 1.75(i), which states: “[A] claim sets

forth a series of elements, each element or step of the claim

should be separated by a line indentation.”

“Elements” have been a part of claims since at least

1862 and continued to be so until the Festo case changed the

nomenclature en banc and brought into sharp focus the

question of which claim terms are subjected to PHE.*®

Although the courts and Congress have used different terms

to refer to terms in a claim, the Federal Circuit’s

pronouncement in Festo has only further muddied the

proverbial patent waters. Against the backdrop of Festo's

complete bar rule against the doctrine of equivalents, a

change in nomenclature only further complicates the analysis

of whether and to what extent PHE bars the application of

the doctrine of equivalents to a particular term.

37 See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931,

933-35 (1987).

38 Sexant Avionique, S.A. v. Analog Devices, Inc., 172 F.3d 817,

826 (Fed. Cir. 1999) (emphasis added); Ethicon Endo-Surgery, Inc. v.

United States Surgical Corp., 149 F.3d 1309, n.*9. (Fed. Cir. 1998) (“we

have stated that ‘the All Elements rule might better be called the All

Limitations rule. It will be referred to as such throughout the remainder

of this opinion”).

39 Vance v. Campbell, 66 U.S. (1 Black) 427, 429 (1862).

There is one previous case that mentioned that claim terms were only

limitations, but the Festo decision was en banc. See Dawn Equip. Co. v.

Kentucky Farms Inc., 140 F.3d 1009, 1014 n.1 (Fed. Cir. 1998).

13

5. PHE Applies To What and Why

When ¢etermining the scope and extent of PHE, as it

applies to amended claim terms, there are two options. PHE

can apply to either the claim term that has been amended or,

alternatively, to the claim term that has been amended as

well as some scope of related claim terms.“ If PHE is found

to apply to only the claim term ti: has been amended, the

doctrine of equivalents will continue to have a viable role in

patent litigation, as evidenced by the ACLARA case.*! On

the other hand, if PHE is applied to the amended claim term

and all related terms under the complete bar of Festo, as in

the Lockheed case, the doctrine of equivalents will likely

cease to exist as a means to thwart the “unscrupulous

copyist."“2, The convoluted, historical descriptions of

“element” and “limitation” only serve to further exacerbate

this problem that difficulty. For this reason, we ask the

Court to clarify the scope and extent of the applicability of

PHE to patent claim terms and provide meaningful

definitions as to what elements and limitations are. :

40 If PHE is found to apply to a claim term that has been

amended and a related claim term, then the amended term is likely a

limitation and the related claim term is likely an element. If, on the other

hand, PHE is limited to only the amended claim term, the amended claim

term is likely an element.

4! ACLARA, 125 F. Supp. 2d 391 (N.D. Cal. 2000).

42 Lockheed, 249 F.3d 1314 (Fed. Cir. 2001); Graver Tank &

Mfg. Co. v. Linde Air Prods. Co., 329 U.S. 605, 607-08 (1950).

14

6. Conclusion

The Patent, Trademark, & Copyright Section of the

Bar Association of D.C. respectfully submits that an opinion

that comments on which claim terms will be affected by

prosecution history estoppel would prevent litigants and

judges from spending valuable resources and time on

tedious, difficult, time-consuming, ing, and expensive claim term

analysis that produces an uncertain result due to a lack of

guidance. Evidence of this already exists with the

afcrementioned post-Festo cases of Lockheed, ACLARA, and

Creo cases.*°

‘3 Lockheed Martin Corp. v. Space Systems/Loral Inc., 249

F.3d 1314 (Fed. Cir. 2001); ACLARA Biosciences, Inc. v. Caliper

Technologies Corp., 125 F.Supp. 2d 391 (N.D. Cal. 2000); Creo

Products Inc. v. Presstek, Inc., 2001 WL 637397 (D. Del. 2001).

15

Respectfully submitted,

PATENT, TRADEMARK, &

COPYRIGHT SECTION

OF THE

BAR ASSOCIATION OF THE

DISTRICT OF COLUMBIA

William P. Atkins

Counsel of Record

Pillsbury Winthrop, LLP

1600 Tysons Boulevard

McLean, Virginia 22102

Counsel for Amicus Curiae

Patent, Trademark, & Copyright

Section of the Bar Association

of the District of Columbia

16