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

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0460%3A36

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2002
- **Citation:** 535 U.S. 722

## Text

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).

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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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0460%3A36. Public record. Not legal advice.