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

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Supreme Court, U.S. 7

Awa 2 200 | 30) FILZD |

(AUG 81 2001

No. 00-1543

IN THE | ea ME

Supreme Court of the United States

FESTO CORPORATION,

Petitioner,

Vv.

SHOKETSU KINZOKU KOGYO

KABUSHIKI Co., LTD., a/k/a

SMO Corp. and SMC PNEUMATICS, INC.,

Respondents.

On Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

BRIEF OF THE HOUSTON INTELLECTUAL

PROPERTY LAW ASSOCIATION

AS AMICUS CURIAE

IN SUPPORT OF PETITIONER

SHARON A. ISRAEL, PRESIDENT *

HOUSTON INTELLECTUAL PROPERTY

LAW ASSOCIATION

L. GENE SPEARS

TIM L. BURGESS

1100 Louisiana Street, Ste. 1800

Houston, Texas 77002

(713) 286-2035

* Counsel of Record Counsel for Amicus Curiae

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WitSON-EPES PRINTING Co., INC. — (202) 789-0096 — WASHINGTON, D.C. 20001

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fer paednbye *

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QUESTIONS PRESENTED

The amicus curiae will address the following questions:

1. Whether every claim-narrowing amendment designed

to comply with any provision of the Patent Act—

including those provisions not related to prior art—

automatically creates prosecution history estoppel

regardless of the reason for the amendment.

2. Whether a finding of prosecution history estoppel

completely bars application of the doctrine of

equivalents.

TABLE OF CONTENTS

TABLE OF AUTIIORITIES ....cccccoccccocssccosscccsscccsscoseress

INTERESTS OF THE AMICUS CURIAE....................

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A. The Contents of a Patent Application ..................

B. The Perils of Claim Drafting and the Doctrine

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C. The PTO’s Action On An Application..................

D. The Accident Of Prosecution History: An

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E. Amendments And The Warner-Jenkinson Pre-

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F. Prospective Consequences and Avoidance

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A. The Federal Circuit Has Applied Prosecution

History Estoppel Flexibly .............cccccccseceeeeneeeees

B. This Court Has Not Countenanced an Inflexible

C. Festo Has Unfairly (And Improperly) Changed

Gee Redes OF Cre Gamne......cccccccccccsscccscseccseccsscessosess

D. The Federal Circuit's “Intrinsic Evidence” Rule

Is Inconsistent With Warner-Jenkinson...............

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(iii)

TABLE OF AUTHORITIES

CASES Page

Dickinson v. Zurko, 527 U.S. 150 (1999) ...........0. 16

Diversitech Corp. v. Century Steps, Inc., 850

Fe GES GUE, Gas, Fp bccscesscsssscssssenssssessssssanes 10

FMC Corp. v. Hennessy Industries, Inc., 836

OE 3

Festo Corp. v. Shoketsu’ Kinzoku Kogyo

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

Graver Tank & Mfg. Co. v. Linde Air Products

Co. TaD GB. Ga Cae esestesssessssseemen 5, 20

Hilton Davis Chemical Co. v. Warner-Jenkinson

Co. Inc., 62 F.3d 1512 (Fed. Cir. 1995)............. passim

Hughes Aircraft Co. v. United States, 717 F.2d

Ce GU, Ga, Fe rereerssssnenessnssnesssssenseessnen 15

Lockwood v. American Airlines, Inc., 107 F.3d

Tg 3

Markman v. Westview Instruments, Inc., 517 U.S.

8 3

Oddzon Products v. Just Toys, Inc., 122 F.3d

Se 9 3

Royal Typewriter Co. v. Remington Rand, Inc.,

168 F.2d 691 (2nd Cir. 1948).........cccceeeeseeeeees 4,6

Wilson Sporting Goods Co. v. David Geoffrey &

Associates, 904 F.2d 677 (Fed. Cir. 1990)......... 10

Texas Instruments, Inc. v. U.S. International

Trade Commission, 988 F.2d 1165 (Fed. Cir.

BOBS) ccccsssresssssssensessessnssnsnsensnscesnvessesnnmanssnsssnseses 10

Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555 (Fed.

CaP FIVE ) cccscccscecssesssesesscscsnscscessesnsssnsssssevenneseenises 13

Warner-Jenkinson Co. Inc. v. Hilton Davis

Chemical Co, 520 U.S. 17 (1997) .......cccccceeeeees passim

TABLE OF AUTHORITIES—Continued

STATUTES AND RULES Page

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ATLL 6, 15

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ATLL A passim

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35 U.S.C. § 154(B)(1)(C) ceeceessccccssssssssscesseesesensessen 14

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37 CAFR. § 1.104(a)...ccccsssscssssccccccsssssssssssseeeeenseesen 4

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Fed. R. Evid. 102 .....ccccccvscsssssssscssssssssssssssseseesessssen 22

INTERESTS OF THE AMICUS CURIAE

The Houston Intellectual Property Law Association

(HIPLA) is an association of over 400 lawyers and other

professionals who work in the Houston, Texas area.' The

practice of most of the HIPLA membership relates in

substantial part to the field of intellectual property law.

Founded in 1961, HIPLA is one of the largest regional

associations of intellectual property practitioners. No HIPLA

member has served as record counsel to any party in the

subject of this appeal.

HIPLA believes that two of the rules announced by the

Federal Circuit in this case will work an arbitrary restriction

of property rights held by a significant number of patentees,

and will burden prospectively the orderly and efficient

operation of the patent system. The first of these is the

Federal Circuit’s holding “that when a claim amendment

creates prosecution history estoppel, no range of equivalents

is available for the amended claim element.” Festo Corp. v.

Shoketsu Kinzoku Kogyo Kabushiki, 234 F.3d 558, 564 (Fed.

Cir. 2000) (en banc). The second is the restriction of

evidence a patent holder may use to rebut the presumption

that unexplained claim amendments are related to patent-

ability to the intrinsic evidence of the prosecution record.

Festo, 234 F.3d at 586. The “inflexible bar” rule is the

subject of the second question presented by Festo’s petition.

The “intrinsic evidence” rule is within the scope of the first.

This amicus curiae respectfully requests that this Court

reverse the Federal Circuit’s holdings on both points.

' No counsel for a party authored this brief in whole or in part, and no

person or entity other than amicus curiae, its members or counsel,

has made a monetary contribution to the preparation or submission of

this brief. This brief is submitted with both parties’ consent.

BACKGROUND

Judge Michel proposed in his partial dissent “that the

majority’s rule will reduce the effective scope, and thus, the

value, of most of the 1,200,000 patents that are unexpired and

enforceable.” Festo, 234 F.3d 558. That critique was not

challenged by the Festo majority, presumably because it is

true. Moreover, this reduction in the scope and value of

patent rights will be worked through rules which, while

satisfying the majority’s desires for certainty, are unfair and

arbitrary as applied to the past behavior of patent applicants

and their attorneys. To fully assess the consequences of the

Federal Circuit’s “inflexible bar” and “intrinsic evidence”

rules, it is necessary to frame those rules in the context of the

process by which patents are applied for and issued.

A. The Contents of a Patent Application

The patenting process begins with the submission of an

application and fee to the United States Patent and Trade-

mark Office (PTO). 35 U.S.C. § 111(a). The “application”

includes a specification (as prescribed by 35 U.S.C. § 112),

drawings (as prescribed by 35 U.S.C. § 113), and an oath (as

prescribed by 35 U.S.C. § 115). 35 U.S.C. § 111(a)(2). The

specification includes a “written description of the invention,

and of the manner and process of making and using it, in such

full, clear, concise and exact terms as to enable any person

skilled in the art . . . to make and use the same.” 35 U.S.C.

§ 112. In addition, the specification “shall conclude with one

or more claims particularly pointing out and distinctly

claiming the subject matter which the applicant regards as his

invention.” /d. The content of the specification, as amended

by the applicant and/or the PTO examiner, is ultimately

reformatted and printed in the patent itself.

A specification may (and typically does) describe multiple

patentable devices or methods. The claims identify which of

these devices or methods are the subject of the patent grant.

For example, a patent applicant disclosing a device having

patentable features A, B, and C, may submit claims to A (or

B or C) alone, or to any of the combinations AB, AC, BC,

and ABC. However, the specification must contain an

explicit written description of anything that the applicant

submits in a claim. Lockwood v. American Airlines, Inc., 107

F.3d 1565, 1571-72 (Fed. Cir. 1997). There is no limit to the

number of claims an applicant may submit—although the

filing fee increases for claims above a certain number.

37 C.F.R. § 1.116. Once issued, the claims become the

measure of the patent, both for the purpose of assessing its

validity and for deciding if it is infringed. Markman v.

Westview Instruments, Inc., 517 U.S. 370, 373 (1996).

In addition to the application and oath, the applicant may

submit an “information disclosure statement” that identifies

prior art that is potentially relevant to the invention.

37 C.F.R. §§ 1.97-98. “Prior art” includes the printed pub-

lications, and instances of prior invention, sale, or use that are

identified by the novelty provisions of 35 U.S.C. § 102. See

Oddzon Products v. Just Toys, Inc., 122 F.3d 1396, 1401-02

(Fed. Cir. 1997). There is no requirement in the patent law

that an applicant conduct any sort of search for prior art. See

FMC Corp. v. Hennessy Industries, Inc., 836 F.2d 521, 526

(Fed. Cir. 1987). However, the PTO imposes a duty on

patent applicants (and their attorneys) to disclose prior art (of

which they are aware) that is “material to patentability.”

37 C.F.R. § 1.56.

At least before the en banc decision in Festo, a common

practice among patent attorneys has been to submit claims of

varying scope—ranging from the most expansive breadth that

may be allowed over the prior art known to the applicant, to a

narrowly-tailored fit to a specific embodiment (such as a

commercial product). This practice is efficient in two

respects. It allows for examination of all patentable aspects

of an invention in a single proceeding (rather than through

multiple applications). And it places the burden of searching

(or knowing) the prior art on a single, skilled PTO examiner,

rather than on multiple applicants with cases pending before

that examiner. The applicant’s imperfect knowledge of the

art can be remedied by amendment without surrendering the

scope to which he/she was otherwise entitled—that is, before

Festo was decided.

B. The Perils of Claim Drafting and the Luctrine of

Equivalents

The drafting of patent claims is an inherently imprecise

exercise. Judge Learned Hand in Royal Typewriter Co. v.

Remington Rand, Inc., 168 F.2d 691 (2nd Cir. 1948),

described the quandary of the applicant in drawing claims.

It is true that a boundary cannot be drawn with precision;

and the draftsman of claims is always in something of a

dilemma—the dilemma which has led to the very

“doctrine of equivalents” itself. He must first pick out

those elements of the [subject matter] which together

make up the invention, for so the statute requires: ‘he

shall particularly point out and distinctly claim the part,

improvement, or combination which he claims as his

invention or discovery.’ On the other hand, if he

confines hitnself rigidly to the elements as they appear in

the specification, he deprives the patent of any practical

value, because it is always, or almost always, possible to

change the form of these as they appear, and yet cull the

full advantage of the discovery. On the other hand, if he

too much abandons the elements as they are disclosed,

he will not ‘particularly point out... the part... or

combination which he claims’: i.e., he will have so far

generalized the disclosure, that the combination of any

elements which will effect the same result will be

covered. The patent will then pro tanto stifle progress in

the art and be invalid. It is impossible to emerge from

this embarrassment without some element of compro-

mise; the elements as they appear in the claims must be

clearly enough identified with elements in the [subject

matter] to be ‘substantially’ limited by their description,

verbal and pictorial. Yet, the claims must be given

enough scope to cover ‘substantiaily similar’ variants. It

is always a question of degree, and courts have differed,

and will always differ, as to the allowable latitude in a

given instance.

168 F.2d at 1092.

This difficulty in drafting claims is all the more chal-

lenging for the reasons stated by Judge Newman, concurring,

in Hilton Davis Chemical Co. v. Warner-Jenkinson Co. Inc.,

62 F.3d 1512, 1536 (Fed. Cir. 1995), reversed and remanded,

Warner-Jenkinson Co. Inc. v. Hilton Davis Chemical Co, 520

U.S. 17 (1997):

The patent law places strong pressure on filing the patent

application early in the development of the technology,

often before the commercial embodiment is developed

or all of the boundaries fully explored. Since the

patentee is barred from enlarging the claims after two

years from the date of issuance, later developments are

excluded from the patent system unless they inde-

pendently meet the criteria of patentability. ... Most

legal documents can be reformed, or amended, or

supplemented. However, the available mechanisms for

patent documents are extremely limited, for neither the

reissue nor reexamination procedure permits adding to

the disclosure. Thus some technologic variants can be

reached only through litigation invoking the doctrine of

equivalents.

As Judge Newman recognized, the inherent imprecision in

a patent applicant’s ability to define his exclusive right with

absolute precision is remedied somewhat through the doctrine

of equivalents. Judge Hand, whose Royal Typewriter deci-

sion was cited approvingly by this Court in Graver Tank &

Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950),

explained as well as anyone how this happens:

Coming then to the question of infringement, we are first

to interpret the claims in the light of the disclosure; and

both the claims and the disclosure in the setting of the

prior art. In these respects, a patent is like any other

legal instrument; but is peculiar in this, that after all aids

to interpretation have been exhausted, and the scope of

the claims has been enlarged as far as the words can be

stretched, on proper occasions, courts make them cover

more than their meaning will bear. If they applied the

law with inexorable rigidity, they would never do this,

but would remit the patentee to his remedy of re-issue,

and that is what they frequently do. Not always,

however, for at times they resort to the “doctrine of

equivalents” to temper unsparing logic and prevent an

infringer from stealing the benefits of an inventicn. No

doubt, this is, strictly speaking, an anomaly; but it is one

which the courts have frankly faced and accepted from

almost the beginning. All patents are entitled to its

benefit to an extent, measured on the one hand by their

contribution to the art, and on the other by the degree to

which it is necessary to depart from the meaning to reach

a just result.

168 F.2d at 692 (citations omitted).

C. The PTO’s Action On An Application

When the PTO receives a patent application, it directs that

application to an “art unit” responsible for examination in the

technical field of the applicant’s invention. The examiner to

which the application is assigned is obliged to “make a

thorough study thereof and shall make a thorough investi-

gation of the prior art relating to the subject matter of the

claimed invention.” 37 C.F.R. § 1.104(a). If the examiner

determines that the invention is not patentable, then “the

claims, or those considered unpatentable will be rejected.”

37 C.F.R. § 1.104(c)(1). When rejecting claims for want of

novelty (see 35 U.S.C. § 102) or for obviousness (see

35 U.S.C. § 103), the examiner “must cite the best references

at his or her command.” 37 C.F.R. § 1.104(c)(2). If the

anne

pertinence of a reference is not apparent, then it “must be

clearly explained, and each rejected claim specified.” /d.

The examiner is under no duty to reject claims, and it is not

unusual for claims to be allowed without any further action

by the applicant.

If the action of the PTO examiner is adverse to the

applicant in any respect, then the applicant has a right to

reply. 37 C.F.R. § 1.111(a). That reply may request

reconsideration or further examination, with or without

amendment. /d. It “must be reduced to a writing which

distinctly and specifically points out the supposed errors in

the examiner’s action and must reply to every ground of

objection and rejection in the prior Office action.” 37 C.F.R.

§ 1.111(b). If the applicant amends his/her claims, then

he/she must “clearly point out the patentable novelty which

he [] thinks the claims present in view of the state of the art”

and “show how the amendments avoid such references or

objections.” 37 C.F.R. § 1.111(c). Although the applicant is

under no duty to reply, the application will be held abandoned

if no reply is received within a certain period of time.

35 U.S.C. § 133.

If the applicant’s arguments are unpersuasive, the exami-

ner may, “on the second or any subsequent examination

or consideration,” make his rejections final. 37 C.F.R.

§ 1.113(a). At this point, there are several options available

to the applicant. If there are allowable claims, then he/she

may cancel the rejected claims and receive a patent claiming

only the allowed subject matter. He/She may request

continued examination by filing the appropriate submissions

and fee. 37 C.F.R. § 1.114(a). He/She may appeal the

rejection to the Board of Patent Appeals and Interferences,

35 U.S.C. § 134(a), whose decisions in turn may be appealed

to the United States Court of Appeals for the Federal Circuit

(35 U.S.C. § 141) or challenged by civil action in the

United States District Court for the District of Columbia

(35 U.S.C. § 145).

At times, claims are rejected not based on prior art or

unsupported breadth, but for technical drafting or non-

substantive reasons correctable by amendment. For example,

a claim that is “dependent” may, by reference to another

claim, incorporate limitations from that claim. See 35 U.S.C.

§ 112. A dependent claim must hang directly (or indirectly

through reference to another dependent claim) from an

independent claim (i.e., one that does not incorporate

limitations by reference from another claim). See 37 C.F.R.

§ 1.75(c). The limitations of the independent claim may not

suffice to distinguish that claim patentably from the prior art,

but the additional limitations of a dependent claim may. In

such a case, the examiner may object to the dependent claim

not because it fails to distinguish over the art, but because it is

not in a form needed for allowance (i.e., it must be rewritten

in independent form). There are any number of non-

substantive informalities that may be identified and corrected.

Amendment is the process of refining the claims so that they

distinguish over the prior art, are not broader than the

specification will support, and are rid of these informalities.

D. The Accident Of Prosecution History: An Example

The sum of all of this activity comprises the “prosecution

history” of the patent. That history is contained in a written

record that the PTO maintains for each patent application that

it processes. Through his/her initial claim selection—and

through the subsequent process of amendment, cancellation,

or argument—the applicant may eventually arrive at claims

that are deemed allowable by the PTO examiner. For the

same invention, there are multiple paths to the same patent.

The Federal Circuit’s “inflexible bar” rule poses dire con-

sequences to applicants whose path included claim amend-

ment—a choice which, before Festo, was little more than an

accident of history.

The arbitrary impact of the Federal Circuit’s “inflexible

bar” may be illustrated through an example based on the

patent addressed in Warner-Jenkinson Co. v. Hilton Davis

Chemical, 520 U.S. 17 (1997). That patent claimed a process

for purifying dye which involved subjecting an aqueous

solution to ultrafiltration through a membrane having a

specified pore size, at a specific hydrostatic pressure range,

and “at a pH from approximately 6.0 to 9.0”. Warner-

Jenkinson, 520 U.S. at 22. During prosecution, the PTO

examiner cited prior art (the Booth patent) teaching an

ultrafiltration process operated at above a pH of 9.0. A patent

having the literal scope of the Hilton Davis patent might have

been arrived at through any of the following routes:

1. Hilton Davis presents original claims limited to

processes operated “at a pH from approximately

6.0 to 9.0,” which are allowed without rejection;

2. Hilton Davis presents original claims limited to

processes operated “at a pH from approximately

6.0 to 9.0,” the claims are rejected based on the

Booth patent, and Hilton Davis argues (successfully)

for patentability in its reply;

3. Hilton Davis presents original claims that contain and

original claims that lack the pH limitation, the

examiner rejects only the claims that lack the pH

limitation, Hilton Davis cancels the rejected claims;

4. Hilton Davis presents original claims that contain and

original claims that lack the pH limitation; the

examiner rejects all the claims, Hilton Davis argues

(successfully) for the pH-limited claims, then cancels

the claims that lack this limitation;

5. Hilton Davis presents original claims that lack any

pH limitation, the examiner rejects those claims;

Hilton Davis amends its claims to a process operated

“at a pH from approximately 6.0 to 9.0” (i.e., the

actual facts of Warner-Jenkinson).

In each case, the claims of the issued patent are literally

identical. But the scope of equivalence afforded each

“patent” would differ dramatically based upon its prosecution

history. In case 1, there would be no prosecution history

estoppel, and Hilton Davis would be entitled to whatever

range of equivalents is allowed by the prior art, see Wilson

Sporting Goods Co. v. David Geoffrey & Associates,

904 F.2d 677, 684 (Fed. Cir. 1990), and by the legal standard

of equivalence. See Warner-Jenkinson, 520 U.S. at 39-40. In

cases 2 and 4, Hilton Davis’s arguments for patentability

would create a prosecution history estoppel under Federal

Circuit law. See Texas Instruments, Inc. v. U.S. International

Trade Commission, 988 F.2d 1165, 1174 (Fed. Cir. 1993). In

case 3, cancellation of the broader claim would also work an

estoppel under Federal Circuit law. See Diversitech Corp. v.

Century Steps, Inc., 850 F.2d 675 (Fed. Cir. 1988). But

because the claims were not amended, the estoppel in cases

2-4 would presumably be analyzed under the “flexible bar”

that the Federal Circuit has applied in dozens of decisions

published since 1983. See Festo, 234 F.3d at 613-15. In case

5, Hilton Davis would, under the “inflexible bar” of Festo, be

entitled to no range of equivalents. That is a severe

consequence — and one that would not have been predicted by

the hypothetical attorney who drafted and prosecuted the

application in case 5. That is why the “inflexible bar” of

Festo is fundamentally unfair when applied to the 1,200,000

patents that are still within their statutory term.

E. Amendments And The WarnerJenkinson Pre-

sumption

The Festo decision is directed to the consequences of claim

amendment on subsequent efforts to enforce the patent

through the doctrine of equivalents. One problem identified

by this Court was that posed by an amendment that is offered

without explanation. In such cases, this Court “place[d] the

burden on the patent holder to establish the reason for an

amendment required during patent prosecution.” Warner-

Jenkinson, 520 U.S. at 33. This Court set up a presumption

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that in those cases “the patent applicant had a substantial

reason related to patentability for including the limiting

element added by amendment.” /d. But that presumption

was “subject to rebuttal if an appropriate reason for a required

amendment is established.” /d. In Festo, the Federal Circuit

limited the evidence that may be used to rebut that

presumption to the contents of the prosecution record. Festo,

234 F.3d at 586.

The application of this “intrinsic evidence” rule to the

1,200,000 patents in force will have consequences that are

every bit as arbitrary and unfair as those that will result from

the “inflexible bar” Other than a PTO regulation urging

applicants to explain how an amendment offered to overcome

prior art defines patentable subject matter (37 C.F.R.

§ 1.111), there is no requirement that a patent applicant

explain his amendments. A patent applicant may amend his

claims by right at any time preceding a final rejection, and by

permission afterward. 37 C.F.R.§ 1.116. Claims may be

amended for a variety of reasons, and those reasons may (or

may not be) identified depending upon the practice of the

attorney who amended them. These reasons may vary from a

change in the responsible attorney, to a change in the design

or formulation of a commercial product to be protected by the

patent, to a change in the law defining patentable subject

matter or infringement, to the discovery of a prior art

reference or information learned in an investigation of

inventorship, et cetera. In none of those cases would the

attorney be obligated to state his reasons for amendment.

And if he did not, then the only evidence that the patent

holder could use to rebut the Warner-Jenkinson presumption

would be extrinsic, and thus excluded from consideration

under Festo.

The Federal Circuit's “intrinsic evidence” rule is especially

pernicious when applied to patent applications originated in

foreign countries and filed in this one under 35 U.S.C. § 119

(as was the Stoll patent asserted by Festo). Domestic

attomeys representing foreign clients frequently face tight

deadlines in filing these applications. It is common in these

cases for the attorney to file a “preliminary amendment”

subsequent to a timely filing of an application that met the

statutory deadline. That practice is recognized and encour-

aged by the PTO’s Manual of Patent Examination Procedure

(MPEP).? The purpose of that “preliminary amendment” is

typically to conform the claims to United States law and

practice, and to the tastes of the domestic attorney. That

explanation may be stated in the prosecution record, or it may

not be—since there was absolutely no requirement that the

attorney do so. Notwithstanding that amendments in these

cases are easily explained through extrinsic evidence, Festo

would bar patentees from offering that explanation. Under

the Federal Circuit’s “intrinsic evidence” rule, the patentee’s

access to the doctrine of equivalents is based solely upon an

accident of attorney practice that was of no consequence at

the time of amendment.

F. Prospective Consequences and Avoidance Behavior

The harsh consequences of the Festo “intrinsic evidence”

rule are avoidable prospectively. Attorneys who have not

previously explained certain amendments will begin to do so.

The same cannot be said of the Festo “inflexible bar.” A

* MPEP §702.01 expressly recommends amendments in the following

situation: “It is obviously to applicant's advantage to file the application

with an adequate disclosure and with claims which conform to the U.S.

Patent and Trademark Office usage and requirements. This should be

done whenever possibie. If, however, due to the pressure of a Convention

deadline or other reasons, this is not possible, applicants are urged to

submit promptly, preferably within 3 months after filing, a preliminary

should be corrected to the extent that the disclosure is readily understood

and the claims to be initially examined are in proper form, particularly as

to dependency, and otherwise clearly define the invention. ‘New matter’

must be excluded from these amendments since preliminary amendments

do not enjoy original disclosure status.” MPEP §608.04(b).

member of the Festo majority theorized in a concurring

opinion that a patent attorney cannot have any expectations at

the application stage regarding the doctrine of equivalents

because he “‘is ill-advised to settle for a narrower claim than

he considers justified on the assumption that he can rely

on the doctrine of equivalents for broader coverage.” Festo,

234 F.3d at 596-97. This amicus curiae respectfully

disagrees. The literal scope that an applicant may claim

through amendment is limited by the written description

contained in the original specification. Although the

applicant may amend the written description to support

amended claim language, he/she will lose the original priority

date by doing so. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d

1555, 1561-63 (Fed. Cir. 1991). This may create invalidating

prior art or bars to patentability out of publications or uses of

the invention that would not otherwise qualify.

Returning to the Warner-Jenkinson hypothetical, there was

presumably support in Hilton Davis’s original specification

for a process operated “at a pH from approximately 6.0 to

9.0.” That support would be in the form of an explicit

statement that identifies this pH range. Assuming that a

process operated “at a pH from approximately 2.0 to 9.0”

would have been patentable to Hilton Davis, the applicant

could have obtained that scope of patent protection:

1. by including the range of “2.0 to 9.0” in its claim

amendment—which it could have done only if its

original specification explicitly identified that range;

2. (if it did not) by amending both the written

description and claims, thereby losing the original

priority date and raising potential invalidating prior

art or bars; or

3. through the doctrine of equivalents.

After Festo, only the first option may be viable. This

suggests the first type of inefficient avoidance behavior that

the “inflexible bar” rule will encourage—the submission of

lengthy (and more time-consuming to examine) specifications

that contain support for every possible literal claim scope the

applicant might want to add subsequently by amendment.

But the more burdensome avoidance behavior, both for the

patent system and for the public, will be a proliferation of

appeals. Returning to the Warner-Jenkinson example,

assume that (at the time of rejection) Hilton Davis: (1) could

support a claim amendment only to processes operated at a

pH of 6.0-9.0; (2) could not amend its written description to

identify a broader range without creating invalidating prior

art; and (3) knew that a process operated at a pH of 5.0 was

perfectly viable. Before Festo, Hilton Davis would likely

have made the “6.0 to 9.0” amendment and relied upon the

doctrine of equivalents.

After Festo, Hilton Davis would appeal the rejection. The

appeal process is neither efficient nor swift,’ and will grow

even less so as the caseload of the Board of Patent Appeals

and Interferences swells in response to Festo. The years that

pass in an appeal are years of term denied the patentee on the

front end—when patent protection is most needed. Under

recent revisions of the patent statute (see 35 U.S.C.

§ 154(b)(1)(C)), that term is added on the back end—at a time

when mature technologies should be passing into the public

domain. ,

ARGUMENT

If in the course of prosecution, claims are amended (as is

commonplace), it is possible that substantive ground was

surrendered to get the claims allowed. A court-made doctrine

with its roots in the common law, the doctrine of prosecution

history estoppel acts as a check on the reach of the doctrine of

equivalents, to prevent recapture of surrendered ground,

* This amicus is unaware of a formal publication of time-to-decision

statistics of the Board of Patent Appeals and Interferences. It appears that

time is about 2-3 years.

. — «= << —

whether it was surrendered to meet a condition of

patentability under 35 U.S.C. §102 or 103, or to comply with

one of the requirements of 35 U.S.C. §112 (e.g, a reduction of

claim scope to what is supported by the specification).

A. The Federal Circuit Has Applied Prosecution History

Estoppel F lexibly

Historically, the doctrine of prosecution history estoppel

has not prevented the doctrine of equivalents from extending

the patentee’s exclusive right to equivalents in the space

between the literal boundaries of the amended claim and what

was surrendered. As stated in the Federal Circuit’s lead case,

Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1363

(Fed. Cir. 1983):

Amendment of claims is a common practice in pros-

ecution of patent applications. No reason or warrant

exists for limiting application of the doctrine of

equivalents to those comparatively few claims allowed

exactly as originally filed and never amended.

In dozens of subsequent cases, the Federal Circuit applied a

flexible bar, in which amended claims are allowed access to

the doctrine of equivalents. These cases were reviewed at

length in Judge Michel’s concurrence. Festo, 234 F.3d at

613-15.

B. This Court Has Not Countenanced an Inflexible Bar

In Warner-Jenkinson, the patentee (Hilton Davis) amended

a claim during prosecution to introduce a limitation of

“approximately pH 6.0” in a pH range extending upwardly to

approximately pH 9.0. The upper pH limitation was inserted

to avoid a prior art reference. There was no indication in the

record why the lower pH limit was inserted. Petitioner

Warner-Jenkinson’s accused process used a pH of 5.0.

Petitioner argued that the amendment to approximately pH

6.0 barred Hilton Davis from reaching petitioner’s process at

pH 5.0, advocating a rule that “any surrender of subject

matter during patent prosecution, regardless of the reason for

such surrender, precludes recapturing any part of that subject

matter, even if it is equivalent to the matter expressly

claimed.” This Court expressly rejected this argument.

Warner-Jenkinson, 520 U.S. at 30. Indeed, this Court

pointed out:

But Petitioner reaches too far in arguing that the reason

for an amendment during patent prosecution is irrelevant

to any subsequent esioppel. /d.

The Court stated:

Our prior cases have consistently applied prosecution

history estoppel only where claims have been amended

for a limited set of reasons, and we see no substan-

tial cause for requiring a more rigid rule invoking

an estoppel regardless of the reasons for a_ change.

Id., at 32.

The Court accordingly ruled that inclusion of the lower pH

6.0 limitation did not necessarily preclude a finding of

infringement based on equivalency: “[WJhile a lower limit of

6.0, by its mere inclusion, became a material element of the

claim, that did not necessarily preclude the application of the

doctrine of equivalents as to that element.” /d.

C. Festo Has Unfairly (And Improperly) Changed the

Rules of the Game

The Federal Circuit has in effect overruled 150 years of

this Court’s precedent and 18 years of its own. Judge Lourie,

concurring, remarked, that if this Court in Dickinson v. Zurko,

527 U.S. 150 (1999), could overrule decades of practice in

order to bring the Federal Circuit’s standard of judicial

review of PTO fact-findings in line with the standard of

review applied to other administrative agencies, then stare

decisis should be no bar to the “important policy decisions”

that the majority thought justified its extreme departure from

precedent. Festo, 234 F.3d at 597.

Sel, ~

In Warner-Jenkinson, this Court admonished that “the

various policy arguments now made by both sides are thus

best addressed to Congress, not this Court.” Yet, on the basis

of policy, the Federal Circuit has “despite the absence of

development of policy issues on this appeal, legislated a new

balance between inventor and imitaior.” Festo, 234 F.3d at

638 (Newman, J., dissenting).

When the petitioner in Warner-Jenkinson urged a bright

line test tantamount to the one the majority in Festo has

“legislated,” this Court adamantly ruled this “was not a

sufficient reason for adopting such a rule”:

That petitioner’s rule might provide a brighter line for

determining whether a patentee is estopped under certain

circumstances is not a sufficient reason for adopting

such a rule. . . . To change so substantially the rules of

the game now could very well subvert the various

balances the PTO sought to strike when issuing the

numerous patents which have not expired and which

would be affected by our decision.

520 U.S. at 32, n.6.

This Court’s pronouncement avdout so _ substantially

changing the “rules of the game” is no less true in this case

than in Warner-Jenkinson. The Federal Circuit’s “legis-

lation” is more appropriately left to the Congress, where

measures can be taken to ameliorate the effect on patentees of

a change in rules that overturns 150 years of this Court’s

precedent and 18 years of the Federal Circuit’s—rules on

which patent applicants have relied. The devastating effect of

these rulings, by which any amendment, however remotely

related to one of the patent statute’s provisions, erects an

absolute bar to availability of the doctrine of equivalents, is

demonstrated specifically by the application of these rulings

to the patents in this case.

SMC’s product literally met each element of Festo’s

Carroll patent except one: “a pair of sealing rings”. SMC

employed a single two way sealing ring. SMC’s sealing ring

was found an infringing equivalent by the district court,

which finding was upheld by the Federal Circuit before this

Court’s decision in Warner-Jenkinson. SMC’s product also

met literally each element of the Stoll patent, except two: the

“sealing rings” and a “magnetizable sleeve.” The Stoll patent

was also found infringed under the doctrine of equivalents,

both at the district court level and on appeal preceding

Warner-Jenkinson.

In the prosecution of the Carroll patent, appellant Festo had

sought reexamination (see 35 U.S.C. § 302, et seq.) in light of

German Patent No. 1,982,379. After the reexamination

request was granted but before reexamination on the merits,

Festo cancelled original claim | and added a new claim that

differed from the original claim in several ways, including the

addition of “a pair of resilient sealing rings.” Because sealing

rings were described in the cited German patent, this element

did not impart a distinction from the prior art. The sealing

rings were not amended during subsequent prosecution. No

argument by the applicant was directed to the sealing rings,

and no issue of patentability concerning the sealing rings was

raised by the examiner. Festo’s argument during reexami-

nation related only to other components of the device. The

examiner mentioned several components of the combination

in the “Reasons for Allowance,” but not the sealing rings.

Nonetheless, the majority decision in Festo held that it

sufficed as a “narrowing amendment” that the claim as a

whole was narrowed when the sealing rings were added

before examination, so as to bar access to the doctrine of

equivalents for that element.

In the prosecution of the Stoll patent, the patent application

was filed in the United States as the English translation of a

prior German patent application. In the first action in the

United States, the examiner rejected the application under 35

U.S.C. §112 4 1, stating: “Exact method of operation unclear.

Is device a true motor or magnetic clutch?” The examiner

also objected to claims 4-12, which apparently were filed in

the same form as in the foreign priority application, as being

in improper multiple dependent form, citing 35 U.S.C. §112

4 2. The examiner also listed three references “believed

pertinent.” The references were not discussed and no rejec-

tion was made based on prior art.

In response, Stoll explained the invention’s method of

operation and amended the specification accordingly. Stoll

also rewrote the claims, eliminating the improper multiple

dependent form. Original claim 1 inciuded as a limitation

“sealing means at each end [of a piston] for wiping

engagement with an internal surface of the tubular part”.

Stoll cancelled original claim | and filed a new independent

claim that included the subject matter of original dependent

claims 4 and 8, which were correspondingly cancelled.

Original claim 4 specified that the “sealing means comprise

sealing rings,” and claim 8 named an additional element: a

“sleeve made of a magnetizable material, which encircles the

hollow cylindrical assembly.” Thus new claim | was nar-

rower as a whole because it replaced “sealing means” with

“sealing rings” and added a “sleeve made of a magnetizable

material and encircles said tube”. The record stated no reason

for these changes. Stoll also submitted two German patents

that were cited during examination of the corresponding

German application, with the explanation that “neither of

these references discloses the use of structure preventing the

interference of impurities located inside the tube . . . while the

arrangement is moved along the tube.” The examiner then

allowed the claims.

Thus, claim 1 was not rejected on prior art but simply as

“unclear”. In response, the language “sealing means at each

end [of a piston] for wiping engagement with an internal

surface of the tubular part . . .” was replaced with “sealing

rings located axially outside said guide rings for wiping said

internal wall as said piston moves along said tube... .” The

German references did not disclose “the use of structure

preventing the interference by impurities insite the tube .. .

while the arrangement is moved along the tube.” Thus the

importation from dependent claim 4 of “sealing rings” to

replace the “sealing means” in original claim | did not narrow

scope to avoid the German references—since the “sealing

means” limitation of original claim | already avoided those

references. The Festo majority ruled that all access to the

doctrine of equivalence was barred not only as to the “sealing

rings” element, but also as to the “magnetizable sleeve” —

notwithstanding that the scope of that element from original

dependent claim 8 was not in the least narrowed.

To further illustrate the consequences of the absolute bar

rule “legislated” by the majority in Festo, suppose that claim

1 were rejected on prior art, but claims 4 and 8 were only

objected to as drafted in improper dependent form. Claims

4 and 8 would presumably be allowed if rewritten to include

the limitations of rejected claim 1, from which they

depended. Under the rule of Festo, access to the doctrine of

equivalents would be barred for the elements added by

amendment. But if claims 4 and 8 had been presented as

independent claims in the first place, they would have been

allowed without amendment, and thus with full access to the

doctrine of equivalents. This result elevates form over

substance.

Nothing in reason or policy supports the Festo inflexible

bar rule. Prosecution history estoppel is a doctrine grounded

in equitable principles, as is the doctrine of equivalents.

Equity does not substitute form for substance. Paraphrasing

the language of this Court in Graver Tank, 339 U.S. at

609, and substituting “prosecution history estoppel” for

“equivalency”:

What constitutes prosecution history estoppel must be

determined against the context of the patent, the prior

art, and the particular circumstances of the case.

Prosecution history estoppel, in the patent law, is not the

prisoner of a formula and is not an absolute to be

considered in a vacuum.

D. The Federal Circuit’s “Intrinsic Evidence’ Rule Is

Inconsistent With Warner-Jenkinson

In Warner-Jenkinson, this Court established a rebuttable

presumption that unexplained claim amendments are related

to patentability and (thus) may limit application of the

doctrine of equivalents. 520 U.S. at 33-34. This presumption

was said to give “proper deference to the role of claims in

defining an invention and providing public notice, and to the

primacy of the PTO in ensuring that the claims allowed cover

only subject matter that is properly patentable in a proffered

patent application.” /d. By limiting the evidence that may be

used to rebut this presumption to the intrinsic prosecution

record, Festo has trivialized the structure that this Court

carefully erected for addressing unexplained amendments.

As one of the Festo judges noted in dissent: “The rebuttable

presumption thereby becomes irrebuttable, because the

prosecution record is necessarily silent in order for the

presumption to arise at all.” Festo, 234 F.3d at 632.

This amicus curiae agrees with the dissenting judge. This

Court did not create an empty procedural expedient. If the

record does not reveal the reason for the amendment, and if

the patentee is to have an effective right of rebuttal, then he

must be permitted to go outside the record and produce his

evidence.

In the interests of “certainty,” the Festo majority has

created a rule of evidence that conditions a patentee’s access

to the doctrine of equivalents on an accident of attorney

practice. As noted above, there are a variety of claim amend-

ments that, even if unexplained in the intrinsic record, are

easily explained by extrinsic evidence. The Federal Circuit’s

decision to deny patentees access to that evidence is

inconsistent both with Warner-Jenkinson and with the basic

rules under which the Federal Courts operate. See Fed. R.

Civ. P. 1 (providing that the Rules of Civil Procedure “shall

be construed and administered to secure the just, speedy and

inexpensive determination of every action”); Fed. R. Evid.

102 (providing that the Rules of Evidence be construed “to

the end that the truth may be ascertained and proceedings

justly determined”’).

CONCLUSION

HIPLA respectfully requests that this Court reverse the

decision of the Federal Circuit, insofar as it is based upon the

“intrinsic evidence” and “inflexible bar” rules identified

above.

Respectfully submitted,