Petition for Writ of Certiorari — Hunt Manufacturing Co. v. Fiskars, Inc.

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(") Supreme Court, U.S.

Case No, 00 1296 FEB 7 - 200]

UOPFICE OF Tne CLERK

IN THE

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 2000

HUNT MANUFACTURING CO.,

Petitioner,

FISKARS, INC. and FISKARS OY AB,

Repondents.

On Petition For a Writ of Certiorari to The

United States Court of Appeals

For the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

Gary A. Hecht

Counsel of Record

Joseph F. Posillico

Mark D. Simpson

SYNNESTVEDT & LECHNER LLP

2600 ARAMARK Tower

1101 Market Street

Philadelphia, PA 19107

Telephone: (215) 923-4466

Attorneys for Petitioner

QUESTIONS PRESENTED

i, Whether prosecution history estoppel applies, as

a matter of law, to a patent claim amendment when the district

eourt’s uncontested factual finding is that the evidence, both

intrinsic and extrinsic, fails to explain why the claim

amendment was made.

a Whether, in view of the Court of Appeals en

banc decision in Festo Corp. v. Shoketsu Kinzoku Kogyo

Kabushiki Co., Ltd.,234 F.3d 558 (Fed. Cir. 2000), it is an error

of law for a court to hold that a claim amendment, made in

response to a prior art rejection, does not create prosecution

history estoppel based exclusively on a conclusion that the

added claim element does not distinguish the prior art.

PARTIES TO THE PROCEEDING

Pursuant to Rule 29.6, Hunt states that it has no parent

company and no domestic non-wholly owned subsidiaries with

publicly traded shares.

Joseph F. Posillico, Esq. was a party appellant in the

case below on an issue unrelated to this petition.

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OBL PARLE A ABAD DAME OL aia DEEN ae CR es He 8

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED ..0..0.....coccocccsccccssccsseseseseee... i

PARTIES TO THE PROCEEDING.......-.ccccccccsece.---..... ii

TABLE OF AUTHORITIEG...........2..c..cescecscesscoseceess...... iv

EE 2

ES a 2

aii ccchcssdenccscsensoscsascenstnmeccesseunessae...... 2

A. se 2

B. Prosecution of Respondent’s Patent........ 3

c. District Court Proceedings...................... 4

D. Court of Appeals Decision...................... 6

REASONS FOR GRANTING THE WRIT.................... 7

I. Certiorari Is Necessary to Confirm

That the Warner-Jenkinson Presumption

Is Mandatory When the Reason for

the Amendment Remains Unknown......... 7

II. The Panel Decision Is Contrary to

the Federal Circuit’s En Banc Decision

I iliacaichtrhhsinscecitnsisoevenntisesnenmsasemeneseceee 15

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ili

TABLE OF AUTHORITIES

Cases Page

Celeco Indus., Inc. v. United States Int'l Trade

Comm'n, 573 F.2d 1247, 1258 (C.C.P.A. 1978) ........... 13

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki

Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000)..............000+. passim

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

{

IN THE

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 2000

HUNT MANUFACTURING CO.,

Petitioner,

Vv.

FISKARS, INC. and FISKARS OY AB,

Repondents.

On Petition For a Writ of Certiorari to The

United States Court of Appeals

For the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

Petitioner Hunt Manufacturing Co. (‘Hunt’)

respectfully prays that this Court issue a writ of certiorari to

review the judgment of the United States Court of Appeals for

the Federal Circuit, dated July 24, 2000. The question

presented is a purely legal one. Because the Court of Appeals’

decision is so clearly erroneous, this case is appropriate for

summary reversal. At a minimum, the decision should be

vacated and remanded for further proceedings in view of the

Federal Circuit’s subsequent en banc decision in Festo Corp. v.

Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558

(Fed. Cir. 2000).

OPINIONS BELOW

The opinion of the Court of Appeals (App.1a - 20a) is

reported at 221 F.3d 1318 (hereinafter “the Panel Decision”).

The opinion of the district court on summary judgment (App.

21a - 54a) is not reported.

JURISDICTION

The judgment of the court of appeals was entered on

July 24, 2000. (App. 1a). A timely petition for rehearing was

denied on October 10, 2000. App. 57a - 58a. On October 16,

2000, the Chief Justice extended the time within which to file

a petition for wnt of certiorari to and including February 7,

2001. The jurisdiction of this Court is invoked under 28 U.S.C.

§ 1254 (1).

STATEMENT

A. _— The Devices at Issue

Hunt and Fiskars, Inc. (“Fiskars”) compete in the field

of manually operated paper cutting devices. Both Hunt and

Fiskars manufacture a cutter having a thin, disc-shaped blade

which is pressed against the paper and allowed to rotate as it

cuts. App. 2la - 22a. Such cutters are referred to as “rotary

cutters.”

In both Hunt’s and Fiskars’ cutters, the blade is held

perpendicular to the paper and allowed to rotate on an axle

housed in a carriage as the carriage is manually pulled by the

user across the paper. The carriage slides along a rail

positioned above the paper. Id.

Both devices hold the cutting blade in a position above

the paper when the cutter is not in use. The present dispute

arises on account of the different mechanisms used to keep the

blade above the paper.

Fiskars’ device uses a spring between the carriage and

the rail to keep the entire carriage assembly above the paper.

App. 26a; see also App. 2a - 3a. A person uses Fiskars’ device

by pushing the entire carriage assembly down onto the paper

(compressing the spring) and then pulling the carriage along the

rail to cut the paper. App. 26a; see also App. 2a- 3a. The axle

and blade of Fiskars’ cutter do not move up or down within the

carriage; only the carriage moves up and down. App. 26a; see

also App. 2a - 3a.

Hunt’s device uses a carriage which does not move up

or down. Instead, the axle is allowed to move up and down

inside the carriage. App. 29a - 31a ; see also App. 4a-Sa. A

spring keeps the axle and the blade in the carriage and above

the paper when the device is not in use. App. 29a - 3la. A

person using Hunt’s cutter presses down on a handle attached

to the axle to expose the blade and to press it against the paper.

Id. The blade retracts back into the carriage when the user

releases the handle. Jd.

B. Prosecution of Respondent’s Patent

Fiskars’ initial efforts to obtain a patent met with

rejection at the U.S. Patent and Trademark Office (PTO).

Claim 1 as originally filed covered any cutting device which

had a spring-type mechanism for keeping the cutting blade

above the paper. App. 33a - 36a. The PTO Examiner

concluded that the claim was not patentable over the prior art.

Id.

The primary basis for the Examiner’s rejection was the

prior art “Mori patent.” Jd. The Mori patent disclosed a

carriage assembly which did not move up or down on the

support arm, but which did have a blade that moved up and

down within the carriage. /d. at 31a - 32a.

Fiskars responded to the PTO rejection by replacing the

- Claim’s original requirement of a spring-type device for holding

the “cutting blade to an inoperative position” with the

narrower requirement of a spring-type device for holding the

“carriage assembly to an inoperative position.” Jd. at 36a

(emphasis added). In the remarks accompanying the

amendment, Fiskars noted that claim 1, as amended, called for

a “carriage assembly . . . which is biased to an inoperative

position on the rail assembly.” Jd. at 59a (page A0257, Il. 18 -

20 from the prosecution history of the Fiskars patent).

Cc. District Court Proceedings

Prior to trial, Hunt moved for summary judgment that

the Hunt device did not infringe the Fiskars patent, either

literally or under the doctrine of equivalents. App. 21a.

The district court held that the Hunt device did not have

any mechanism to hold the entire carriage assembly off the

paper and that therefore it did not literally infringe the Fiskars’

patent.’ App. 46a - 47a. This judgment was not appealed by

The district court ruled on literal infringement only with

respect to claims 8 and 9 because Fiskars had withdrawn all

Fiskars. App. Sa.

With respect to the doctrine of equivalents, Hunt had

sought summary judgment that prosecution history estoppel

barred infringement. The district court denied this aspect of

Hunt’s motion.

In considering Hunt’s summary judgment motion, the

district court evaluated the prosecution history of the Fiskars

patent and concluded that “[t]his patent history gives no

indication why plaintiffs amended claim 1 by substituting

‘carriage assembly’ for ‘cutting blade.” App. 50a.

Furthermore, after evaluating the extrinsic evidence submitted

by Fiskars, the district court observed an “inability” on Fiskars’

part to “to demonstrate exactly why they adopted this

amendment... .” App. 52a.

Hunt argued that, according to the ruling of this Court

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

U.S. 17 (1997), such an unexplained amendment gives rise, as

a matter of law, to a presumption that the amendment was made

for a purpose relating to patentability. Although the district

court acknowledged this Court’s ruling, it expressly refused to

presume that the amendment was made for a purpose relating

to patentability:

Because the patent record provides no

explanation for the amendment, defendant

contends that estoppel should be presumed

under Warner-Jenkinson. I am not so certain. .

It is questionable whether the presumption

other allegations of literal infringement. App. 40a.

should be triggered by an amendment so

detached from the objections of the patent

examiner as is the case here.

App. 5la.

With these comments, the district court refused to apply

the presumption mandated by this Court in Warner-Jenkinson.

Furthermore, the district court ignored this Court’s

ruling on the type of proof required to rebut the presumption.

The district court held that the presumption, even if it did exist,

was rebutted by the court’s finding that the amendment “did not

relate to patentability,” notwithstanding that the patentee could

provide no affirmative reason why the amendment was made.

App. 5la - 52a.

The issue of infringement under the doctrine of

equivalents was then tried to a jury. The verdict was for

Fiskars, and the court entered judgment on the verdict.

D. Court of Appeals Decision

On appeal, a three judge panel of the Federal Circuit

affirmed the district court’s rulings. App. la - 20a. After

repeating the arguments made by the parties to the district court

(App. 5a - 6a), the Panel devoted only two paragraphs to

- addressing the question of prosecution history estoppel

respecting the carriage assembly amendments, stating “[w]Je

discern no reversible error in the district court’s conclusion.”

App. 6a - 7a.

REASONS FOR GRANTING THE WRIT

I. Certiorari Is Necessary to Confirm That the Warner-

Jenkinson Presumption Is Mandatory When the

Reason for the Amendment Remains Unknown

This is not an ordinary patent case. It involves the

refusal of the Federal Circuit to follow Supreme Court

precedent on one of the most fundamental questions of patent

law: how far beyond its literal scope can a patent reach to

provide protection against infringement? This Court in

Warner-Jenkinson answered this question by crafting a

carefully balanced analytical framework which gives effect to

“the definitional and public-notice functions of the statutory

claiming requirement” when infringement is asserted under the

doctrine of equivalents. Warner-Jenkinson, 520 U.S. at 29.

Twenty years of Federal Circuit jurisprudence have

highlighted the importance of the public-notice function of the

statutory claiming requirement. As stated by the Federal Circuit

majority in Festo:

Our decision to reject the flexible bar approach adopted

in [prior precedent] comes after nearly twenty years of

experience in performing our role as the sole court of

appeals for patent matters. In those years, the notice

function of patent claims has become paramount, and

the need for certainty as to the scope of patent

protection has been emphasized.

Festo, 234 F.3d at 574 - 75.

The doctrine of prosecution history estoppel, when

properly applied, serves the important function of protecting

the definitional and public-notice aspects of the patent law from

an over-expansion of the doctrine of equivalents. Festo, 234

F.3d at 564 (“[p]rosecution history estoppel is one tool that

prevents the doctrine of equivalents from vitiating the notice

function of claims”).

It is clear, therefore, that this Court constructed the

analytical framework in Warner-Jenkinson as an answer to “the

problem of. . . what to do in a case like the one at bar, where

the record seems not to reveal the reason for including [the

claim limitation added by amendment].” Warner-Jenkinson,

520 U.S. at 33. This Court solved the problem of unexplained

amendments by imposing burdens on the patentee and requiring

the court to make certain presumptions if those burdens are not

met. More particularly, this Court held:

Mindful that claims do indeed serve both a

definitional and a notice function, we think the

better rule is to place the burden on the patent

holder to establish the reason for an

amendment required during patent prosecution.

The court then would decide whether that

reason is sufficient to overcome prosecution

history estoppel as a bar to application of the

doctrine of equivalents to the element added by

that amendment. Where no explanation is

established, however, the court should presume

that the patent applicant had a substantial reason

related to patentability for including the limiting

element added by amendment. In: those

circumstances, prosecution history estoppel

would bar the application of the doctrine of

equivalents as to that element. The presumption

we have described, one subject to rebuttal if an

appropriate reason for a required amendment

is established, gives 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.

Id. at 33 - 34 (emphasis added).

The Supreme Court thus established that all conclusions

concerning the scope of prosecution history estoppel should be

based on an understanding by the court of the reason for the

amendment. Because the patentee is clearly in the best position

to provide this understanding, this Court placed the burden of

explaining amendments squarely on the patentee. The Warner-

Jenkinson presumption, if properly applied, ensures that the

consequences of an ambiguity fall on the patentee, who is in a

position to prevent the ambiguity, and not on members of the

public, who must rely on the record made by the patentee to

determine the reason for an amendment.

If a patentee is unable to provide a viable reason for the

amendment, then the court is not in any position to assess

whether the reason “is sufficient to overcome prosecution

history estoppel.” Jd. Therefore, if the reason for an amendment

remains unknown, then the presumption of a reason relating to

patentability is unrebutted and prosecution history estoppel

applies as a matter of law.

This Court’s instructions regarding the presumption

were effectively ignored by both the district court and the

Federal Circuit. After considering the prosecution history of the

Fiskars patent and the inventor’s litigation-induced explanation

for the amendment, the district court unequivocally held that

Fiskars was “unable to come up with evidence explaining why

they amended claim | by substituting ‘carriage assembly’ for

‘cutting blade.’” App. 52a. Fiskars did not ask the Federal

Circuit to review this finding, and the Federal Circuit did not do

sO.

Since the carriage assembly amendment remains

unexplained, this Court’s ruling in Warner-Jenkinson permits

only one result - application of the doctrine of prosecution

history estoppel. The Federal Circuit’s refusal to apply the

presumption is clearly erroneous.

The Federal Circuit clearly understood this Court’s

decision in Warner-Jenkinson to require evidence of “an

appropriate reason for the required amendment” in order to

rebut the presumption of patentable purpose. App. 7a.

Nevertheless, the Panel’s decision used a perceived absence of

a reason for the amendment as an acceptable substitute for

evidence of “an appropriate reason.”

The Panel’s approach has been rejected by this Court.

The Panel Decision is based on the premise that the absence of

a reason is equivalent to finding “an appropriate reason” for the

amendment. This premise was expressly rejected by this Court:

In our view, holding that certain reasons for a

claim amendment may avoid the application of

prosecution history estoppel is not tantamount to

holding that the absence of a reason for an

amendment may similarly avoid such an

estoppel.

Warner-Jenkinson, 520 U.S. at 33 (emphasis in original).

The Supreme Court’s rejection of the approach taken by

the Appeals Court is absolutely necessary if the Supreme

Court’s ruling is to have meaning. In Warner-Jenkinson, the

Court considered a claim that had been amended to require a pH

of “approximately 6.0 to 9.0.” Jd. at 32. The Court concluded

that “the reason for adding the lower limit of 6.0 is unclear,”

noting that:

The lower limit certainly did not serve to distinguish the

Booth patent, which said nothing about pH levels below

6.0.

Id.

Precisely because the amendment did not “serve to

distinguish” the prior art, the “case at bar” in Warner-Jenkinson

was one of those cases in which the reason for the amendment

was not revealed by the prosecution history record. The

Supreme Court’s ruling was clear - in such a case the

amendment is presumed to have been made for a purpose

relating to patentability. The Warner-Jenkinson presumption

thus arises from the fact that the claim amendment had no

apparent purpose, including an apparent inability to distinguish

the claims over the prior art cited by the Examiner.

The Federal Circuit’s purported justification for not

applying prosecution history estoppel in the present case is

logically inconsistent with the premise of the Warner-Jenkinson

decision. The district court and the Federal Circuit held that the

presumption could be rebutted by the same fact that gave rise to

the Warner-Jenkinson presumption in the first place.

The Federal Circuit affirmed the district court’s decision

as follows:

The district court found that the amendment

substituting "carriage assembly" for "cutting

blade" was not directed to distinguishing the

claims from the cited references, and thus that

the amendment was not made for reasons of

patentability. See Warner-Jenkinson Co. v.

Hilton Davis Chem. Co., 520 U.S. 17, 33, 117

S.Ct. 1040, 137 L.Ed.2d 146, 41 USPQ2d 1865,

1873 (1997) (the presumption that an

amendment was made for reasons of

patentability is “subject to rebuttal if an

appropriate reason for a required amendment is

established.") We discern no reversible error in

the district court's conclusion.

App. 6a - 7a. Thus, the Federal Circuit held that the

presumption of patentable purpose was rebutted by the fact that

the claim amendment did not distinguish the prior art. This was

precisely the same fact that caused this Court to create the

Warner-Jenkinson presumption.

This result, if allowed to stand, would be a death knell

to a consistent and predictable application of the Warner-

Jenkinson presumption. The Supreme Court held that the

presumption was subject to rebuttal by evidence of “an

appropriate reason” for the amendment. Warner-Jenkinson,

520 U.S. at 33. It would be inimical to the purpose of the rule

to allow the presumption to be rebutted by the very same fact

which gave rise to the presumption in the first place. The law

of prosecution history estoppel should not be allowed to exist

in such a confused state.

As this Court has recognized, the doctrine of

prosecution history estoppel serves the important role of

ensuring that the doctrine of equivalents does not negate the

Se ee Lg

public-notice policies of the patent statute. The Federal

Circuit’s decision, if allowed to stand, would do substantial

harm to the public-notice function of statutory claiming.

In order to ensure that a new product resides in a safe

harbor relative to the patents of others, competitor’s operating

under the Supreme Court’s framework would attempt to

determine what subject matter was surrendered by a patent

applicant by looking to the reason an amendment was made.

The premise of this evaluation is that patent applicants, like all

other rational persons, take actions for a reason. The Supreme

Court’s framework focuses on a search for a reason for the

amendment based on the simple premise that such a reason

must exist.’ This reason for the amendment would then provide

a logical basis for determining the bounds of the safe harbor.

The identification of the safe harbor is of critical

importance to the design of new products which can properly

compete with the patented device. Such design-around activity

has long been held to be a primary benefit of the patent system

in this country.

Under the analysis used in the Panel Decision, however,

competitors would have to confront a world in which

amendments are made without any apparent purpose. No

The Federal Circuit’s predecessor court recognized that

“applicant’s ultimate goal in submitting amendments and

arguments in support thereof is the securing of a patent . . .”)

Celeco Indus., Inc. v. United States Int'l Trade Comm'n, 573

F.2d 1247, 1258 (C.C.P.A. 1978) (prosecution history

estoppel can be created by ission as well as by

amendment).

valuable guidance for the real world can be derived from an

analysis which permits such an unrealistic result.

Moreover, the approach used in the Panel Decision will

encourage ambiguity in patent prosecution; in contrast, a strict

adherence to the Supreme Court’s approach will discourage

ambiguity in patent prosecution and serve to enhance the

public-notice function of statutory claiming. This contrast in

result derives from the fact that patent applicants are uniquely

suited to make the reason for their amendments known at the

time the amendment is made.

If a patent applicant is aware that an unexplained

amendment will be presumed to create an estoppel (as with the

holding in Warner-Jenkinson), then the applicant has no reason

to leave the amendment unexplained. On the other hand, if the

approach used in the Panel Decision is allowed to stand, a

patent applicant will benefit from an ambiguous record which

hides the true purpose of an amendment. By creating an

ambiguous record, a patent applicant would preserve the option

of arguing during litigation that the unexplained amendment did

not have a purpose relating to patentability, thereby avoiding

prosecution history estoppel.

The Panel Decision would effectively eviscerate the

Warner-Jenkinson presumption and visit devastating harm on

the delicate balance of competing policies carefully

accommodated by the Supreme Court’s analytical framework.

For this reason alone, certiorari should be granted.

Il. The Panel Decision is Contrary to the Federal

Circuit’s En Banc Decision in Festo

The Panel Decision refuses to apply prosecution history

estoppel to the carriage assembly amendment based on a

definition of “patentability” that has since been expressly

overruled by the Federal Circuit’s en banc decision in Festo.

In Festo, the Federal Circuit answered five questions

concerning the doctrine of equivalents and prosecution history

estoppel. Questions 1, which is relevant here, is reproduced

below:

1. For the purposes of determining whether an

amendment to a claim creates prosecution

history estoppel, is "a substantial reason related

to patentability," Warner-Jenkinson Co. v.

Hilton Davis Chem. Co., 520 U.S. 17, 33, 117

S.Ct. 1040, 137 L.Ed.2d 146 (1997), limited to

those amendments made to overcome prior art

under §§ 102 and §§ 103, or does "patentability"

mean any reason affecting the issuance of a

patent?”

Festo 234 F.3d at 563. The Federal Circuit majority answered

this question as follows:

For the purposes of determining whether an

amendment gives rise to prosecution history

estoppel, "a substantial reason related to

patentability” is not limited to overcoming or

avoiding prior art, but instead includes any

reason which relates to the statutory

requirements for a patent. Therefore, a

natrowing amendment made for any reason

related to the statutory requirements for a patent

will give rise to prosecution history estoppel

with respect to the amended claim element.

Id. at 566 (emphasis in original).°

The Panel Decision cannot stand in view of the Federal

Circuit’s en banc answer to question 1. The majority in Festo

explained that the patent statute has many provisions, and that

prosecution history estoppel will arise from an amendment that

addresses any one of these provisions. The Panel Decision,

even if it were otherwise consistent with Warner-Jenkinson,

still would be clearly erroneous because it assumes that

prosecution history estoppel can only arise from an amendment

made to distinguish the prior art.

The Panel Decision justified its refusal to apply the

Warner-Jenkinson presumption on the faulty premise that an

amendment can have a reason relating to patentability only if it

serves to distinguish the claim from the prior art. The Panel

Decision upheld the district court’s conclusion that “the

amendment was not made for reasons of patentability” based

exclusively on the finding that the carriage assembly

amendment “was not directed to distinguishing the claims from

the cited references.” App. 6a - 7a. This reasoning can not

In addition to the majority opinion, the Federal Circuit’s en

banc review produced two concurring opinions (Plager and

Lourie) and four opinions concurring-in-part and dissenting

in part (Michel (joined by Rader); Rader; Linn (joined by

Rader); and Newman). Only the Newman opinion is in

dissent respecting en banc question one.

OOo

Stand in view of Festo.

Even if this Court had not already rejected in Warner -

Jenkinson the Panel’s premise that the absence of a reason

relating to patentability is equivalent to a reason not relating to

patentability, the Panel’s decision would have to go much

farther than it did to rebut the presumption of patentable

purpose. The Panel’s decision did not address any of the other

possible patentability reasons for which that the amendment

might have been made. The majority in Festo identified some

of these additional reasons as follows:

[There are a number of Statutory requirements

that must be satisfied before a valid patent can

issue and that thus relate to patentability. In

addition to Satisfying the novelty and non-

obviousness requirements of 35 U.S.C. §§ 102

and 103, 35 U.S.C.A. §§ 102, 103 (West 1994

& Supp.2000), the claims must be directed to

patentable subject matter and the Claimed

invention must be useful, as set forth in 35

U.S.C. § 101 (1994). Additionally, the first

paragraph of 35 U.S.C. § 112 requires that the

patent specification describe, enable, and set

forth the best mode of Catrying out the

invention, 35 U.S.C. § 112, 4 1 (1994), while

the second paragraph of section 112 requires

that the claims set forth the subject matter that

the applicant regards as his invention and that

the claims particularly point out and distinctly

define the invention, 35 U.S.C. §§ 112, 4 2

(1994). The Patent Office will reject a patent

application that fails to Satisfy any one of these

Statutory requirements. See Man. Pat. Exam. P.

2100-1 to -173 (7th ed. rev. 1 1998). And any

one of these requirements may be a ground for

invalidating an issued patent. E.g., 35 U.S.C. §

282 (1994). An amendment related to any of

these statutory requirements is an amendment

made for “a substantial reason related to

patentability.”

Festo, 234 F.3d at 566 - 67 (citations to case authority omitted).

Thus, even if the absence of a reason were equivalent to

a reason, the Panel Decision would need to be vacated and

remanded, with instructions to establish whether the

amendment was not made for “any reason which relates to the

statutory requirements for a patent.” Jd. at 566. (emphasis in

original).

CONCLUSION

For the foregoing reasons, this petition for certiorari

should be granted. Because the Panel Decision is so clearly

erroneous, summary reversal is appropriate.

Respectfully submitted,

vaca of Record

Joseph F. Posillico

Mark D. Simpson

Synnestvedt & Lechner LLP

2600 ARAMARK Tower

1101 Market Street

Philadelphia, PA 19107-2950

Dated: February 7, 2001 (215) 923-4466

(Cite as: 221 F.3d 1318)

United States Court of Appeals,

Federal Circuit.

FISKARS, INC. and Fiskars Oy AB, Plaintiffs-A ppellees,

HUNT MANUFACTURING CO., Defendant-Appellant,

and

Joseph F. Posillico, Sanctioned Party-Appellant.

Nos. 98-1560, 98-1566.

July 24, 2000.

Rehearing and Rehearing En Banc Denied Oct. 10, 2000.

(Cite as: 221 F.3d 1318, *1319) David J. Harth, Foley &

Lardner, of Madison, Wisconsin, argued for plaintiffs-appellees.

With him on the bref were Joan L. Eads, Anat Hakim, and

Nancy Y.T. Hanewicz. Of counsel was Jefferson Perkins.

Joseph F. Posillico, Synnestvedt & Lechner, LLP, of

Philadelphia, Pennsylvania, argued for defendant-appellant and

sanctioned party-appellant. With him on the brief were Mark D.

Simpson, and Gary A. Hecht.

Before NEWMAN, RADER, and SCHALL, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Hunt Manufacturing Co. (Hunt) appeals the judgment of the

United States District Court for the Western District of

Wisconsin, [FN1] entered upon a jury verdict of infringement,

under the doctrine of equivalents, of United States Patent No.

5,322,001 (the '001 or Fiskars patent) entitled "Paper Cutter

with Circular Blades,” owned by Fiskars Oy AB and Fiskars,

Inc. (together "Fiskars"). Hunt also appeals the district court's

determination that there was not inequitable conduct in the

United States Patent and Trademark Office. Hunt and its

counsel Joseph F. Posillico appeal the ruling that Mr. Posillico

had vexatiously and unreasonably multiplied the proceedings on

the issue of inequitable conduct, thereby incurring liability for

Fiskars’ litigation costs on that issue.

FN]. Fiskars, Inc. v. Hunt Mfg. Co., No. 97-C-0255-C

(W.D.Wis. Aug. 4, 1998). >

The judgment is affirmed.

BACKGROUND

The '001 patent is directed to a circular-blade paper cutter,

illustrated in patent Figure 1:

FIG. 1

In contrast with guillotine-type paper cutters which employ a

long blade that pivots at one end, the patented cutter has a

circular blade 18 enclosed in a carriage assembly 16 that rides

along a rail 14. The rail is secured to the cutting board at both

ends by pivots 27 which allow the rail to be raised for insertion

of the paper. The blade assembly is biased upwardly by

springs 48, as seen in the detailed drawings of the Carriage

assembly in patent Figures 5 and 6: )

FIG. 5 FIG. 6

To cut the paper the carriage assembly enclosing the blade is

pressed down and drawn along the rail. When the pressure is

released the biasing springs return the carriage assembly and

blade to an inoperative position, preventing accidental cuts of

paper or operator.

Claims 1 and 8 are representative, with paragraphing and

emphases added to show the terms at issue with respect to

infringement under the doctrine of equivalents:

1. A cutting board assembly for cutting or trimming paper

sheets, said assembly comprising

[a] a cutting board,

[b] a pair of posts mounted on said cutting board,

[c] a rail assembly pivotally mounted on said posts in a

parallel relation to said cutting board,

[d] a carriage assembly mounted on said rail assembly for

movement across the cutting board,

[e] a circular cutting blade mounted for rotary motion in said

carriage assembly, “

[f] means for biasing said carriage assembly to an inoperative

position on said rail assembly, said biasing means comprises

a pair of leaf springs mounted on said carriage assembly for

biasing said carriage assembly to an inoperative position on

said rail assembly

[g] whereby said carriage assembly must be moved from said

inoperative position to an operative position on the rail

assembly for cutting or trimming the paper sheets.

8. Apparatus for cutting sheet material compnising:

[a] a cutter board,

[b] a pair of pivot blocks mounted in a spaced relation on said

cutter board,

[c] arail assembly pivotally mounted on said pivot blocks for

movement between operative and inoperative positions with

respect to said board,

[d] a carriage assembly mounted on said rail assembly for

translational movement across the board,

[e] said carriage assembly including a rotary cutting blade,

and :

[f] a spring assembly formed on said carriage assembly for

biasing said carriage assembly to an inoperative position on

said rail assembly __

[g] whereby said cutting blade is activated by pressing said

carriage assembly down and sliding said carriage assembly

across said rail assembly.

The accused Hunt paper cutter, called the Heavy Duty Rotary

12 Paper Trimmer, differs in two ways from the Fiskars device

that is described and claimed in the '001 patent. First, with

respect to clause [e] of claims 1 and 8, in the Fiskars device the

blade is mounted in the carriage assembly and the entire

ae lo

carnage assembly is biased by a spring, whereas the Hunt

circular blade is mounted in a sub-assembly that is biased by a

spring within the carriage assembly. Second, clause [f] of claim

| specifies a pair of leaf springs, and clause [f] of claim 8 does

not specify the kind of spring but states that the spring assembly

is "formed on" the carriage assembly; the Hunt device uses a

free-standing coil spring.

Upon Fiskars’ suit for patent infringement Hunt raised the

defenses of non-infringement, patent invalidity, and

unenforceability for inequitable conduct. The district court

granted partial summary judgment that Hunt did not literally

infringe the '001 patent; that ruling is not appealed. Hunt

abandoned the defense of patent invalidity at the start of trial.

The issue of infringement under the doctrine of equivalents

was tried to ajury. The issue of inequitable conduct was tried

to the court.

INFRINGEMENT

A. Prosecution History Estoppel

The district court determined before trial that prosecution

history estoppel did not preclude Fiskars from asserting

infringement under the doctrine of equivalents. Hunt states

that the court erred in its rulings concerning estoppel.

1. The Carriage Assembly

Hunt argues that Fiskars is estopped from asserting equivalency

between the biased carriage assembly of the claims and the

biased sub-assembly of the Hunt device because during

prosecution Fiskars amended the term "cutting blade" to

"carriage assembly." Fiskars argues that any presumption that

the amendment was made for reasons of patentability was

rebutted by evidence that this amendment was not made to

overcome any cited reference: the inventor explained that this

amendment was made to remove the unintended limitation of

the claims to a cutting blade, for other blades such as

perforating and scoring blades could also be used without

change in the device.

Hunt also relies on United States Patents No. 5,069,097 to

Mon and No. 3,301,117 to Spaulding, both of which are

directed to paper cutters. The examiner had cited Mori for its

showing ofa cutting assembly using a circular blade but lacking

a means of biasing the cutting blade to an inoperative position,

and Spaulding for its showing of a cutting assembly with means

for biasing non-circular blades to an inoperative position on a

rail. The district court discussed these patents, and their role in

the patentability of the Fiskars patent, in extensive detail. The

court observed that Mori shows a circular cutting blade that is

biased downward toward the paper to be cut, but does not show

biasing the blade and carriage upward to an inoperative position

as in the Fiskars patent; the court found that the Mori cutting

blade is biased in the opposite direction for a different purpose.

Concerning Spaulding, the district court observed that

Spaulding shows two non-circular blades protruding from the

bottom of a carriage that rides on a rail that is upwardly biased

by springs. In Spaulding downward pressure moves the rail

and carriage assembly into contact with the paper, but when the

cutter is not in use the blades protrude below the rail. By

contrast, in the Fiskars device the carriage and blade, but not the

rail, move to bring the blade into contact with the paper, such

that when the cutter is not in use the blade does not protrude

below the rail because both the carriage and the blade are biased

upwardly.

The district court found that the amendment substituting

"carnage assembly" for "cutting blade" was not directed to

distinguishing the claims from the cited references, and thus

that the amendment was not made for reasons of patentability.

See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520

U.S. 17, 33, 117 S.Ct. 1040, 137 L.Ed.2d 146, 41 USPQ2d

1865, 1873 (1997) (the presumption that an amendment was

made for reasons of patentability is "subject to rebuttal if an

appropniate reason for a required amendment is established.")

We discern no reversible error in the district court's conclusion.

Thus the question of equivalency between these elements, the

claimed biased assembly and the Hunt biased sub-assembly,

was properly presented for jury determination.

2. The Biasing Spring

The Fiskars patent variously claims the biasing spring as "a

pair of leaf springs" (claim 1), "a pair of spring blades” (claim

6), and "a spring assembly formed on the carnage assembly”

(claim 8). The district court held that the prosecution history

did not establish an estoppel against equivalency between the

claimed biasing pair of leaf springs and the Hunt biasing coil

spring, and presented the question of equivalency to the jury.

Hunt argues that all of the claims should be interpreted as

limited to springs that are located "in the rail," and that any

broader interpretation is estopped by the prosecution history.

Only claim 10 states that the spring is located in the rail; claim

10 was not asserted against Hunt. Although no asserted claim

requires that the spring is located in the rail, Hunt argues that

this feature was emphasized during prosecution in order to

distinguish the Spaulding and Mori references, and that the -

applicant deceived the examiner into thinking that all of the

claims had been amended to include the limitation that appears

in claim 10. The district court did not accept Hunt's position.

We agree that estoppel did not arise from this assertion of

deception of the examiner, for the prosecution record clearly

stated which claims were amended to add the limitation that the

spring is in the rail, and the examiner thereafter allowed the

claims. "[{T]here is a presumption that public officers perform

their duties correctly, fairly, in good faith, and in accordance

with the law and governing regulations..." Haley v.

Department of the Treasury, 977 F.2d 553, 558 (Fed.Cir. 1992)

(quoting United States v. Chemical Foundation, Inc., 272 U.S.

1, 14-15, 47 S.Ct. 1, 71 L.Ed. 131 (1926)).

The claims in suit were not amended to add the limitation of

the spring in the rail. The district court correctly ruled that the

claims in suit are not limited to a device wherein the spring is

located in the rail, and that there is no estoppel against

equivalency based on the location of the spring.

Hunt also argues that any infringing spring must perform the

dual roles of biasing and supporting the blade assembly. Hunt

cites Fiskars' argument during prosecution that the spring not

only biases the blade but also supports the carnage on the rail,

and states that the Hunt coil spring does not provide support for

the carriage sub-assembly. Fiskars’ expert testified that a

spring that biases something in an upward direction necessarily

supports it.

Fiskars points out that the only asserted claim that was

amended to include a supporting as well as a biasing function

was claim 6, and that claim 6 is the only asserted claim in

which the support function was mentioned in prosecution

argument. Although claim 6 may be subject to prosecution

history estoppel as to this element, the other claims in suit are

not. Claims whose allowance was not due to a particular

argument are not subject to estoppel deriving from that

argument. We agree with the district court that there was no

estoppel barring the jury question of equivalency of the biasing

springs.

B. The Prior Art

Hunt argues that the burden of proof was misplaced as to

whether a hypothetical claim covering the range of equivalents

Fiskars was asserting would ensnare the prior art. Hunt does

not argue that a hypothetical claim embracing its device would

not be patentable; Hunt simply argues that Fiskars had the

burden of presenting evidence and establishing that Hunt's

device was not in the prior art, as part of its proof of

infringement. Hunt states that the district court misplaced the

burden of proof, thus requiring a new trial.

Hunt's theory is incorrect. It is an affirmative defense of the

accused infringer to allege and to show that it is practicing the

prior art. When the patentee has presented a prima facie case of

infringement, the burden shifts to the accused infringer to come

forward with evidence to establish this defense. See National

Presto Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1192, 37

USPQ2d 1685, 1689 (Fed.Cir.1996) ("When the patentee has

made a prima facie case of infringement under the doctrine of

equivalents, the burden of coming forward with evidence to

show that the accused device is in the prior art is upon the

accused infringer.") The patentee is not required to negate an

affirmative defense that has not been pled and supported with

evidence.

Hunt did not allege that its device is in the prior art, or that a

hypothetical claim covering its device would be unpatentable.

See Wilson Sporting Goods Co. v. David Geoffrey &

Associates, 904 F.2d 677, 685, 14 USPQ2d 1942, 1949

(Fed.Cir.1990) (determining patentability of a hypothetical

claim covering the accused device). Absent any evidence

proffered by Hunt to show that its device was in the prior art,

10a

there was nothing for Fiskars to rebut.

C. The Jury Verdicts

The question of infringement under the doctrine of equivalents

was tried to a jury. For each claimed element for which

equivalency was asserted, witnesses addressed the similarities

and differences as to the substituted element, including the

function, way, and result of each element. After three days of

trial the jury found infringement of claims |, 5, 6, and 8, and

non- infringement of claims 2 and 9. On post-trial motions the

district court upheld the verdicts, ruling that the jury's findings

were supported by substantial evidence, and that a new trial was

not warranted.

The jury's verdicts must be sustained if they are supported by

substantial evidence upon the entirety of the record. See

National Presto, 76 F.3d at 1190, 37 USPQ2d at 1687

(reviewing the trial proceedings "to ascertain whether there was

substantial evidence whereby a reasonable jury could have

reached the verdict that was reached”). Hunt argues that no

reasonable jury could have found infringement by equivalency,

pointing particularly to the differences between coil and leaf

springs and arguing that these springs are not interchangeable

as they are embodied in the accused and patented devices.

Interchangeability is indeed relevant to equivalency, and the

subject of the springs and their function, the way the function

was performed, and the result, were the subject of testimony

and conflicting views at trial. We agree with the district court

that a reasonable jury could have accepted the evidence

presented by Fiskars that the Hunt device's coil spring

performed substantially the same biasing and supporting

function in substantially the same way, with substantially the

same result, compared with the leaf springs of the Fiskars

device. The evidence of equivalency between the biased

assembly and the biased sub-assembly was also substantial, and

sufficient to support the verdict.

Hunt complains that the district court did not permit Hunt to

present evidence to the jury of the separate patentability of its

device. Since it is well established that separate patentability

does not avoid equivalency as a matter of law, see Atlas Powder

Co. v. E.]. du Pont De Nemours & Co., 750 F.2d 1569, 1580,

224 USPQ 409, 417 (Fed.Cir.1984) ("where defendant has

appropriated the material features of the patent in suit,

infringement will be found ‘even when those features have been

supplemented and modified to such an extent that the defendant

may be entitled to a patent for the improvement.’ "), we do not

intrude upon the trial court's evidentiary ruling, see Kearns v.

Chrysler Corp., 32 F.3d 1541, 1547, 31 USPQ2d 1746, 1750

(Fed.Cir.1994) (" 'The decision to admit or exclude evidence is

within the sound discretion of the trial court and will be

reversed on appeal only for a clear abuse of that discretion.’ ")

(quoting Smith & Lee Assocs., Inc. v. City of Taylor, Mich., 13

F.3d 920, 928 (6th Cir.1993)); Cooper v. Carl A. Nelson &

Co., 211 F.3d 1008, 1018 (7th Cir.2000) ("When reviewing the

district court's evidentiary decisions, we employ an abuse of

discretion standard and consequently give great deference to the

trial court.") The admission or exclusion of evidence not

material to the issue of infringement is consigned to the

discretion of the trial judge.

Hunt also states that if any individual element of the Hunt

device is in the prior art, that element can not be deemed

equivalent to any claimed element. That theory is incorrect.

A claim to a mechanical device usually recites a combination of

several elements, most or all of which may be separately

known. See Rosemount, Inc. v. Beckman Instruments, Inc.,

727 F.2d 1540, 1546, 221 USPQ 1, 7 (Fed.Cir.1984) ("a

12a

combination may be patentable whether it be composed of

elements all new, partly new, or all old"); Fromson v. Advance

Offset Plate, Inc., 755 F.2d 1549, 1556 n. 3, 225 USPQ 26, 31

n. 3 (Fed.Cir.1985) ("Only God works from nothing. Men

must work with old elements."). That an element of an accused

device already existed does not bar equivalency as to that

element. See Wamer-Jenkinson, 520 U.S. at 25, 117 S.Ct.

1040, 41 USPQ2d at 1869 (known interchangeability of

elements is evidence of equivalency) (citing Graver Tank &

Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct. 854,

94 L.Ed. 1097, 85 USPQ 328 (1950)).

The verdicts of infringement under the doctrine of equivalents

were supported by substantial evidence and were in accordance

with law, and the judgment entered thereon must be affirmed.

D. Damages |

The jury awarded damages to Fiskars in the amounts of

$114,760 for lost profits, $1,127,650 for past price erosion, and

$1,856,552 for future price erosion. Hunt appeals the award as

"speculative and contradictory."

On the issue of lost profits, Hunt does not appeal the

calculation thereof. Instead, Hunt argued at trial, and again on

appeal, that Fiskars would not have made the sales that Hunt

made, and therefore is not entitled to damages based on those

sales. Hunt stressed that ninety percent of its sales were made

to the Staples chain of office supply stores, and argued that

Staples prefers to deal with a single supplier who would provide

a full line of paper cutters, linear as well as rotary, and that

since Fiskars did not make a full line of paper cutters, Fiskars

would not have made any sales of rotary paper cutters to

Staples.

13a

The evidence at trial was that no single supplier would have

been able to provide a full line of paper cutters without

infringing the Fiskars patent, for no non-infringing substitute

was commercially available for Fiskars’ rotary cutter. The

district court, reviewing the evidence on post-trial motions,

concluded that a reasonable jury could have found that Hunt's

customer Staples would have purchased its supply of rotary

cutters from Fiskars but for Hunt's infringement. We agree that

there was substantial evidence supporting the verdict on this

issue.

Hunt also challenges the damages verdicts based on price

erosion. Evidence on this issue was presented by financial and

marketing officers and accounting witnesses for both sides.

Fiskars' damages expert testified as to the effect of Hunt's past

infringement on Fiskars’ prices, and the effect of this price

erosion projected into the future. The witness applied the

factors set forth in Panduit Corp. v. Stahlin Bros. Fibre Works,

Inc., 575 F.2d 1152, 197 USPQ 726 (6th Cir. 1978) and adopted

by the Federal Circuit, see, e.g., Rite-Hite Corp. v. Kelley Co.,

56 F.3d 1538, 1545, 35 USPQ2d 1065, 1069 (Fed.Cir.1995) (en

banc ).

Hunt argues that Fiskars’ damages expert failed to take into

account that Fiskars would have experienced fewer sales had it

not reduced its prices in the face of Hunt's competing

(infringing) device. Hunt also disputes the testimony that

Fiskars’ sales of rotary cutters would have grown at the rate of

10% in an industry that was growing overall at 1%. A witness

from Fiskars’ Marketing Department testified that Fiskars had

experienced this growth rate in the sales of its rotary cutters and

estimated the future growth rate, and testified concerning the

price reductions Fiskars had been obliged to make in response

to Hunt's infringing sales. Another Fiskars witness testified

concerning the difficulty Fiskars would encounter in attempting

l4a

to reestablish its former prices after having reduced its prices in

response to Hunt's infringing sales, and explained that Hunt's

undercutting prices would lead to continuing price erosion, even

after infringement had ceased. Hunt's witnesses disputed the

conclusions of Fiskars’ witnesses and presented contrary

opinions.

On these conflicting positions and arguments, there was

substantial evidence whereby a reasonable jury could have

reached the damages verdicts here reached. See Brooktree

Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1579-

80, 24 USPQ2d 1401, 1418-19 (Fed.Cir.1992) (the jury award

of damages is upheld unless it is " ‘grossly excessive or

monstrous’, clearly not supported by the evidence, or based only

on speculation or guesswork") (quoting Los Angeles Memorial

Coliseum Comm'n v. National Football League, 791 F.2d 1356,

1360 (9th Cir.1986)); Smith v. Rowe, 761 F.2d 360, 368 (7th

Cir.1985) ("Damages assessed by a jury are largely

discretionary with it.... To reverse the judgment of the trial

court, the appellate court must conclude that the verdict was so

‘gross’ or ‘monstrously excessive’ that the trial court abused its

discretion in permitting it to stand.") (quoting Galard v.

Johnson, 504 F.2d 1198, 1200 (7th Cir.1974)).

Hunt also argues that the district court erred in refusing to

strike Fiskars' entire damages case because Fiskars did not

disclose early enough in the discovery process that it had made

some sales to national chains such as Staples. The district

court commented in its post-trial memorandum that it had

offered to exclude this evidence from the damages trial, but that

Hunt had declined the offer since the evidence was useful to

Hunt by diminishing the significance of Hunt's infringing sales.

The district court held that Hunt can not, on post trial motion,

attack an evidentiary ruling that it requested, having been

offered and rejected the ruling it now demands. The district

15a

court's actions were within its discretion, and are sustained.

E. Other Challenged Rulings

Hunt argues that the district court erred in limiting Hunt's

presentation at trial to the references that Hunt filed in

accordance with 35 U.S.C. § 282 and the court's pre-trial rules

and orders. The district court, denying Hunt's motion for anew

trial on this ground, referred to Hunt's multiple flouting of the

court's "deadlines for the completion of discovery, for the filing

of expert reports, for the filing of dispositive motions and for

disclosure of lay witnesses." The district court's orders

concerning scheduling and expert reports were reasonable trial

management, and will not be disturbed. See Abbott Labs. v.

Brennan, 952 F.2d 1346, 1351, 21 USPQ2d 1192, 1196

(Fed.Cir.1991) ("It is improper on appeal to disturb a district

court's trial management, absent a clear abuse of judicial

discretion.”); Hebert v. Lisle Corp., 99 F.3d 1109, 1114, 40

USPQ2d 1611, 1614 (Fed.Cir.1996) (same). We take note that

despite these infractions the court granted Hunt a three-week

continuance when, on. the Thursday before trial, Hunt

announced a newly discovered reference. This reference was

then translated and admitted into evidence.

Hunt complains of other rulings, and argues that the district

court "tramples on Hunt's due process rights.” This argument

is belied by the record. We discern no abuse of discretion in

the district court's evidentiary rulings.

INEQUITABLE CONDUCT

Hunt raised the defense that the '001 patent is unenforceable

due to inequitable conduct by Fiskars during prosecution in the

Patent and Trademark Office.

l6a

A ruling of inequitable conduct in patent prosecution requires

the threshold findings that the applicant withheld material

information from the PTO during examination of the patent or

submitted material false information, and that the applicant

acted with the intent to deceive or mislead the examiner into

granting the patent. These findings must be made by clear and

convincing evidence. See Kingsdown Medical Consultants,

Ltd. v. Hollister, Inc., 863 F.2d 867, 876, 9 USPQ2d 1384,

1392 (Fed.Cir.1988) (en banc ). When both materiality and

intent have been established, these facts are weighed to

determine the ultimate question of inequitable conduct.

This issue was tried to the court as to the findings of underlying

facts of materiality and intent, as well as the ultimate question

of whether these facts constituted inequitable conduct. This

procedure is within the district court's discretion, as explained

in Hebert v. Lisle Corp., 99 F.3d 1109, 1114, 40 USPQ2d 1611,

1614 (Fed.Cir. 1996), and on appellate review the district court's

factual findings are reviewed for clear error while the ruling on

the ultimate question is reviewed on the standard of abuse of

discretion. See Modine Mfg. Co. v. Allen Group, Inc., 917 F.2d

538, 541, 16 USPQ2d 1622, 1624 (Fed.Cir.1990); Kingsdown,

863 F.2d at 876, 9 USPQ2d at 1392.

Hunt states that four material items were withheld from the

PTO with the intent to deceive or mislead the examiner. The

four items were three prior art paper cutters and a patent to

Benavidez. Hunt concentrated its argument on a paper cutter

called the "Maruzen device," which the inventor had seen at a

trade show. The inventor testified that he considered this

device to be the closest prior art.

The prosecution history shows a brochure describing the

Maruzen paper cutter listed on PTO Form 1449 ("List of

17a

References Cited by Applicant(s)") and submitted to the PTO.

Although Hunt does not dispute that the Maruzen brochure was

submitted to the PTO, Hunt argues that the examiner did not

consider it, pointing to the line drawn through this listing on

Form 1449. See Man. Pat. Exam. P. 609 (7th ed.1998)

(directing an examiner to line through a reference that is not

being considered) [FN2]. Hunt states that this placed on Fiskars

the obligation to stress to the examiner the relevance of the

Maruzen device. However, the earlier PTO requirement that

the applicant explain the relevance of the references listed was

removed in 1992. Hunt makes no argument that Fiskars

otherwise wrongly withheld the brochure.

FN2. MPEP 609 directs an examiner to line through,

and not consider, a prior art reference when the

requirements of 37 C.F.R. § 1.97 or § 1.98 have not

been satisfied. Hunt has not argued that Fiskars failed

to satisfy any of these requirements, and the examiner

gave no reason for the action. Therefore, we do not

address the status of a reference that was submitted to

the PTO without satisfying 37 C.F.R. § 1.97 and § 1.98.

The district court held that when a reference was cited to the

patent examiner it can not be deemed to have been withheld,

citing Scripps Clinic & Research Found. v. Genentech, Inc., 927

F.2d 1565, 18 USPQ2d 1001 (Fed.Cir.1991). In Scripps the

court held that inequitable conduct could not be based on an

applicant's failure to cite a prior art reference, when the

examiner independently cited the same reference. Hunt argues

that the district court misread Scripps; we do not share Hunt's

view. An applicant can not be guilty of inequitable conduct if

the reference was cited to the examiner, whether or not it was

a ground of rejection by the examiner. We do not know the

examiner's reason for lining out the three cutters, but Fiskars’

citation as prior art defeats Hunt's charge that the Maruzen

18a

device was withheld with deceptive intent. An applicant is not

required to tell the PTO twice about the same prior art, on pain

of loss of the patent for inequitable conduct.

The district court held that Hunt failed to introduce any

evidence of withholding of prior art material to patentability.

In its brief, Hunt discusses the features of the three cutters that

are now asserted to be material to patentability. However, as

the court observed, there was no evidence at trial as to how

these three references compared in relevance to the thirteen

references considered and listed by the examiner. The district

court's ruling that Hunt produced no evidence of withholding of

material prior art is well supported by the record.

— On the issue of intent, Hunt provided no evidence of

intentional withholding of material prior art. Hunt cites

Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182,

25 USPQ2d 1561 (Fed.Cir.1993) for its observation that a

"smoking gun” is "not always necessary,” to establish intent to

deceive. However, Paragon does not hold that there need be no

evidence of culpable intent. In Paragon the affiants with

"deliberate artfulness” swore that they were "not employed” by

Paragon whereas they were owners or paid consultants of

Paragon; this evidence was found to establish culpable intent.

The court did not hold in Paragon that intent could be found

without any factual basis. See, e.g., Goodyear Tire & Rubber

Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1122

(Fed.Cir.1998) ("Both materiality and culpable intent are

essential factual predicates of inequitable conduct, and each

must be proved by clear and convincing evidence."); B.F.

Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577,

1584, 37 USPQ2d 1314, 1319 (Fed.Cir.1996) ("One alleging

inequitable conduct must prove the threshold elements of

materiality and intent by clear and convincing evidence.")

19a

We affirm the district court's ruling that the facts predicate to

inequitable conduct were not established.

The district court deemed the inequitable conduct claim "so

lacking in substance as to constitute a waste of the time and

resources of all the participants.” The court imposed sanctions

on Hunt's counsel for "multiply [ing] the proceedings ...

unreasonably and vexatiously,” 28 U.S.C. § 1927 [FN3], and

awarded Fiskars $8,582.50 of the attorney fees it incurred in

defending against this charge.

FN3. 28 U.S.C. § 1927. Counsel's liability for

excessive costs

Any attorney or other person admitted to conduct cases

in any court of the United States or any Territory thereof

who so multiplies the proceedings in any case

unreasonably and vexatiously may be required by the

court to satisfy personally the excess costs, expenses,

and attorneys’ fees reasonably incurred because of such

conduct.

Hunt's counsel argues that the district court abused its

discretion in imposing this sanction. He states that he

presented a prima facie case of inequitable conduct, and that he

did not act in bad faith. He argues that the inventor might have

supported the charge of inequitable conduct had he been less

credible or his testimony different, and that credibility could not

be known until the inventor testified at the trial.

Even a generous view of the record from Hunt's position does

not weaken the district court's observation that neither material

withholding nor intent to deceive was supported with evidence

sufficient to make a prima facie case. An applicant's citation

of prior art in accordance with the rules of the PTO precludes

a finding of withholding of that prior art with deceptive intent.

20a

The Seventh Circuit makes clear that liability under § 1927 for

unreasonable and vexatious prolongation of the proceedings

does not require that the actions were taken in bad faith. See

Knorr Brake Corp. v. Harbil, Inc., 738 F.2d 223, 226-27 (7th

Cir.1984) ("This court has not required an express finding by

the district court of subjective bad faith or intent to delay to

support an award of fees under section 1927.") In the words of

the district court, "[Hunt's] decision to pursue the counterclaim

caused [Fiskars] to incur additional expenses, created extensive

work for the court and cast a cloud over the integrity of the

inventor and his original counsel.” [FN4]

FN4. The patent attorney who prosecuted the '001

patent was retired, had undergone surgery for cancer,

and was suffering significant cognitive difficulties. As

the district court observed from his deposition

testimony, he could no longer remember any detail

about his work on the application for the '001 patent,

including "whether he ever met personally with Boda

[the inventor].”

In matters of trial management and attorney discipline, marked

deference is owed to the discretionary rulings of the judge

conducting the trial. Abbott Labs. v. Brennan, 952 F.2d 1346,

1351, 21 USPQ2d 1192, 1196 (Fed.Cir.1991) ("It is improper

on appeal to disturb a district court's trial management, absent

a clear abuse of judicial discretion.") Absent a clear abuse of

the trial judge's discretion, it is inappropriate for the appellate

court to disturb a disciplinary action that is based on litigation

conduct. Such abuse of discretion has not been shown. The

sanction is affirmed.

AFFIRMED

2la

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF WISCONSIN

FISKARS, INC., a Wisconsin corporation,

and FISKARS OY AB, Helsinki, Finland,

OPINION AND

ORDER

Plaintiffs,

97-C-255-C

HUNT MANUFACTURING CO.,

a Pennsylvania corporation,

Defendant.

In this action for monetary and injunctive relief,

plaintiffs assert that defendant has infringed United States

Patent No. 5,322,001, of which plaintiff Fiskars Oy AB is the

owner and plaintiff Fiskars, Inc. is the exclusive licensee. This

case is before the court on defendant Hunt Manufacturing Co.’s

motion for summary judgment, in which defendant contends

that its device does not literally infringe the ’001 patent and that

the doctrine of prosecution history estoppel bars plaintiffs from

asserting infringement under the doctrine of equivalents.

The accused device, defendant’s “Heavy Duty Rotary

12" Paper Trimmer,” is a product in which paper is cut by a

22a

round blade that is housed in a carriage assembly, with a portion

of the blade protruding from the bottom of the carriage

assembly. The carriage assembly is mounted on and slides

along a rail, which is attached to the cutting board. A user

positions the paper to be cut under the rail and then depresses

the top of the carriage assembly, referred to as the “‘handle/blade

support” and to which the blade is attached, therefore pushing

the blade down and into contact with the cutting surface. The

user then slides the entire carriage assembly along the rail and

across the paper, allowing the blade to cut the paper. When the

carriage assembly is released, a helical spring located in the

carriage assembly pushes the handle/blade support upward,

lifting the blade to an inoperative position not in contact with

the cutting surface.

Plaintiffs’ ‘001 patent discloses a paper cutter with

circular blades of the same variety as defendant’s product.

Plaintiffs assert that defendant’s device literally infringes

independent claim 8 of the ‘001 patent, which discloses, in

pertinent part, ‘“‘a spring assembly formed on said carriage

assembly for biasing said carriage assembly to an inoperative

position.” Plaintiffs contend that the accused device infringes

independent claims 1 and 6 under the doctrine of equivalents;

these claims differ from claim 8 in that they disclose “a pair of

leaf springs mounted on said carriage assembly” (claim 1) and

“a pair of spring blades formed on said carriage assembly”

(claim 6) as the means for biasing the carriage assembly to an

inoperative position. Plaintiff asserts an additional literal

infringement count under claim 9, which is dependent upon

claim 8, and additional equivalent infringement counts under

claims 2 and 5, which are dependent upon claim 1.

In this motion for summary judgment, defendant

disputes that its paper trimmer infringes claim 8 literally.

Defendant argues that its helical spring structure is not covered

23a

by the “spring assembly formed on said carriage assembly”

claim limitation. Additionally, defendant contends that the

accused device contains no means for “biasing” the carriage

assembly “to an inoperative position,” because its helical spring

structure biases only a portion of the carriage assembly.

Defendant argues that plaintiffs are estopped from asserting

infringement under the doctrine of equivalents as to the biased

carriage assembly element because this limitation was added to

the patent during its prosecution to obtain allowance from the

Patent and Trademark Office. Similarly, defendant contends

that plaintiffs are estopped from asserting that the helical spring

structure in the accused device is an equivalent of the leaf

springs and spring blades disclosed in claims 1 and 6 because

both of these limitations were added during the patent’s

prosecution.

I conclude that the accused device does not infringe

claim 8 literally. Although defendant’s helical spring structure

qualifies as a “spring assembly formed on said carriage

assembly,” a proper construction of that claim requires that the

spring assembly bias, or influence directionally, the entire

carriage assembly. The undisputed facts reveal that defendant’s

helical spring structure biases only a portion of the carriage

assembly. I conclude also that the prosecution history of the

‘001 patent does not preclude plaintiffs from asserting that the

accused device contains an equivalent to the biased carriage

assembly element, because it is clear that plaintiffs did not

amend the patent application to add that limitation in an effort

to ensure patentability. The same is true of the amendments

adding the leaf spring and spring blade elements of claims 1 and

During the briefing of this motion for summary

judgment, defendant submitted along with its reply brief a

document entitled “Additional Proposed Findings of Fact.”

24a

Dkt. #37. In an order dated January 28, 1998, United States

Magistrate Judge Crocker concluded that this filing did not

comply with this district’s standard procedures to followed on

summary judgment and ordered defendant to resubmit the

document after bringing it into conformance with those

procedures. Defendant resubmitted its additional proposed

facts, but with individual explanations as to how each proposed

fact responded to plaintiffs’ summary judgment submissions.

Plaintiffs moved to strike this amended document, along with

the filing accompanying it and requested the alternative relief

of being allowed to file a surreply to these submissions.

However, plaintiffs failed to object to the proposed facts

individually, as instructed in Magistrate Judge Crocker’s order.

Most of defendant’s additional proposed findings of fact repeat

or support defendant’s responses to plaintiffs’ proposed facts

and provide sufficient cross-referencing to that effect. These

proposed factual submissions will be admitted; the remainder

have been disregarded. Plaintiffs’ request for leave to file

surreply materials will be denied. Plaintiffs’ request to strike

portions of defendant’s reply brief raising new arguments is

addressed in the opinion section below. From the parties’

properly proposed factual submissions, | find that the following

matters are not in dispute.

UNDISPUTED FACTS

Plaintiff Fiskars Oy AB, a corporation organized under

the laws of Finland, owns United States Patent No. 5,322,001

entitled Paper Cutter with Circular Blades. Plaintiff Fiskars,

Inc. a Wisconsin corporation, is the exclusive licensee of the

‘011 patent. Defendant Hunt Manufacturing Co. is a

Pennsylvania corporation that manufactures and sells a product

designated as the “Heavy Duty Rotary 12" Paper Trimmer.”

The paper cutter claimed in the ‘001 patent and the paper

25a

trimmer sold by defendant provide a safe and more accurate

alternative to traditional paper cutters, which have long,

exposed blades mounted on a pivoting arm which are pulled

down and into contact with the paper to be cut. In both the

claimed invention and defendant’s device, the paper is cut by a

round blade that is housed in a carriage assembly; a portion of

the blade protrudes slightly out of the bottom of the carriage

assembly. In turn, the carriage assembly is mounted on and

slides along a rail attached to the cutting board. Paper is

positioned so that the desired path of cut lies directly under the

rail and the carriage assembly is depressed and slid along the

rail and across the paper, bringing the blade into contact with

the paper surface.

A. The ‘001 Patent

Plaintiff's United States Patent No. 5,322,001 was

issued June 24, 1994. The following illustration, Figure | from

the ‘001 patent, depicts a preferred embodiment of the claimed

invention with a cutting board (12), and arail assembly (14) and

a carriage assembly (16). In this embodiment, the rail assembly

is connected to the cutting board through pivot posts (26) and

pivot blocks (27), which allow the entire rail assembly to be

raised from the cutting board surface and then lowered once the

paper is positioned, securing it in place.

26a

5 ® fa?

Fig. 1, ‘001 Patent

Figures 5 and 6 show different views of a preferred embodiment

of the carriage assembly, which comprises a trolley (34), cutting

blade (18) and cover (36). The cover can be removed and

different blades inserted, including a pinking blade, wave blade,

perforation blade or scoring blade. In this embodiment, two

leaf springs (48) are molded into the carriage assembly; the

ends of these leaf springs rest on the rail assembly and hold the

carriage assembly in an inoperative position, with the cutting

blade clear of the cutting surface. To operate the cutter,

downward pressure is applied on the carriage assembly,

compressing the leaf springs and bringing the blade into contact

with the cutting surface. The carriage assembly is slid along the

rail, causing the blade to roll across and cut the paper. When

the carriage assembly is released, the leaf springs lift the blade

and carriage assembly back to an inoperative position.

27a

Fig. 5, ‘001 Patent Fig. 6, ‘001 Patent

Of the ‘001 patent’s 10 claims, claims 1, 6 and 8, are

independent. The three independent claims, all of which are

relevant to the present motion, provide as follows:

1. A cutting board assembly for cutting or trimming

paper sheets, said assembly comprising a cutting board, a pair

of posts mounted on said cutting board, a rail assembly

pivotally mounted on said posts in a parallel relation to said

cutting board, a carriage assembly mounted on said rail

assembly for movement across the cutting board, a circular

cutting blade mounted for rotary motion in said carriage

assembly, means for biasing said carriage assembly to an

inoperative position on said rail assembly, said biasing

means comprises a pair of leaf springs mounted on said

carriage assembly for biasing said carriage assembly to an

inoperative position on said rail assembly whereby said

carriage assembly must be moved from said inoperative

position to an operative position on the rail assembly for

cutting or trimming the paper sheets.

**+*

28a

6. A paper cutting or trimming device comprising:

a cutting board having a material guide in the board,

a rail assembly mounted in parallel relation to said

cutting board for pivotal movement between operative

and inoperative positions with respect to said cutting

board,

a carriage assembly mounted for sliding movement on

said rail assembly,

said carriage assembly including a circular blade for

cutting or trimming paper sheets,

a pair of spring blades formed on said carriage

assembly for supporting and biasing said carriage

assembly to an inoperative position on said rail

assembly, and

a mat embedded in the surface of said cutting board in

alignment with the circular cutting blade whereby said

cutting blade will roll across the mat on the cutting

board when moved to the operative position on said rail

assembly to cut or trim the edge of the paper.

***

8. Apparatus for cutting sheet material comprising:

a cutter board, a pair of pivot blocks mounted in spaced

relation on said cutter board,

a rail assembly pivotally mounted on said pivot blocks

for movement between operative and inoperative

29a

positions with respect to said board,

a carriage assembly mounted on said rail assembly for

translational movement across the board,

said carriage assembly including a rotary cutting blade,

and

a spring assembly formed on said carriage assembly

for biasing said carriage assembly to an inoperative

position on said rail assembly whereby said cutting

blade is activated by pressing said carriage assembly

down and sliding said carriage assembly across said

rail assembly. (Emphasis added.)

B. Defendant’s Paper Trimmer

Defendant’s “Heavy Duty Rotary 12" Paper Trimmer”

operates in a fashion very similar to that of the claimed

invention. The device has a cutting board and a pivotally

mounted rail that can be lifted and lowered. Mounted on the

rail is a carriage assembly housing a rotary blade. Figures A

and B are cross-sectional views of defendant’s carriage

assembly in inoperative and operative positions, respectively.

The carriage assembly includes a back trolley member (1), a

front trolley member (4), a central helical spring (3), a

handle/blade support (5), a rotary cutting blade (7) and a front

cover (6). The front and back trolley members are mounted on

the T-shaped rail (2). An upstanding finger (10) protrudes from

the front trolley member and supports the central helical spring.

The upper end of the spring contacts a shoulder (107) of the

handle/blade support, on which the cutting blade is mounted.

The spring biases the handle/blade support to its uppermost

position, so that the blade is not in contact with the cutting

30a

surface (see Fig. A). When the handle/blade support is

depressed, the spring compresses and the blade is forced

downward, engaging the cutting surface (see Fig. B). With the

blade engaged, the operator can slide the carriage assembly

across the rail to cut paper. With respect to the components of

the carriage assembly in defendant’s paper timmer, only the

handle/blade support, the blade and to a certain extend the

helical spring moves vertically in relation to the rail.

Fig. A

TLL Lk

Fig. B

C. Pnor Art

United States Patent No. 5,069,097, issued to Moni,

discloses a paper cutting machine with a cutting board and rail,

on which was mounted a “slider” (essentially a carnage

assembly) housing a cutter blade. In the Mori invention, a

portion of the carriage assembly, which included the cutter

blade, was biased downward by two helical springs located on

finger portions of the assembly. The springs held the blade in

an operative position in full contact with the cutting surface.

The force with which the Mori cutting blade is pressed against

the paper cannot be controlled by applying manual pressure on

‘the top of the carriage assembly. When the Mori blade

encounters an object resistant to being cut, such as a staple, the

helical springs compress and the blade and blade carrier are

displaced upward. The Mori patent shows no means for using

springs to bias its cutter blade or carriage assembly to an

inoperative position relative to the rail assembly. Figure 7 from

the ‘097 patent shows an exploded perspective view of the Mori

carriage assembly, figure C is a cross sectional view of the same

32a

device submitted by plaintiff that is not part of the ‘097 patent

file.

Fig 7, ‘097 Patent Fig. C

s md

S35t sess

On January 31, 1967, United States Patent No. 3,301,117 was

issued to D.E. Spaulding. The Spaulding patent discloses a

paper cutter with a pair of non-rotary cutting blades housed in

a carriage assembly that slides along a rail. Additionally,

Spaulding discloses a pair of helical springs positioned at either

end of the rail that bias the entire rail away from the cutting

board, placing the blade and carriage assembly in an inoperative

position. Figure 2 from the Spaulding patent depicts a

foreshortened section view of the cutting blade (45), carriage

assembly (70), rail (12) and helical springs (23).

- ae.

Fig. 2, ‘117 Patent

D. Prosecution History

l. Patent application

On May 28, 1993, plaintiffs filed with the United States

Patent and Trademark Office Patent Application No.

08/068,399, entitled “Paper Cutter with Circular Blades.” The

application as filed contained 12 claims. The independent

claims 1, 7 and 10 of the original ‘399 application, which

became claims 1, 6 and 8 of the ‘011 patent, respectively,

provided as follows:

1. A cutting board assembly for cutting and/or timming

paper sheets, said assembly comprising a cutting board, a rail

assembly pivotally mounted on said cutting board, a carriage

assembly mounted on said rail assembly for movement across

the cutting board, a circular butting blade mounted in said

carnage assembly including means for biasing said cutting

blade to an inoperative position on said rail assembly whereby

34a

said carriage assembly must be moved from an inoperative

position to an operative position on the rail assembly before

cutting the paper sheets.

7. A paper cutting and/or trimming device comprising:

a cutting board having a material guide in the upper

surface thereof,

a rail assembly pivotally mounted on said cutting board

in a perpendicular relation to said material guide for

movement between operative and inoperative positions

with respect to said cutting board,

a carriage assembly mounted for sliding movement on

said rail assembly,

said carriage assembly including a circular blade for

cutting and/or trimming paper sheets, and

a mat embedded in the surface of said cutting board in

alignment with the cutting blade whereby said cutting

blade will roll across the mat on the cutting board to

trim the edge of the paper.

* * *

10. Apparatus for cutting sheet material comprising:

a cutter board,

a rail assembly mounted on said board for movement

between operative and inoperative positions with

35a

respect to said board,

a Carriage assembly mounted on said rail assembly for

translational movement across the board,

said carriage assembly including a rotary cutting blade,

and

means biasing said carriage assembly to an inoperative

position on said rail assembly whereby said cutting

blade is activated by pressing said carriage assembly

down and across said rail assembly.

2. First office action

On August 26, 1993, the Patent and Trademark Office

issued a first office action rejecting all proposed claims of the

‘399 application. Proposed claim 7, which made no reference

to means for biasing the carnage assembly to an inoperative

position, was rejected as clearly anticipated by the Moni patent.

Proposed claims | and 10 (as well as several dependent claims)

were rejected under 35 U.S.C. § 103 as being unpatentable over

Mori in view of the Spaulding patent. In discussing this

rejection, the patent examiner made the following statement:

Moni discloses a cutting board assembly

substantially as claimed. Morn lacks means

biasing the cutting blade to an inoperative

position on the rail assembly. Spaulding

discloses a paper cutter including spring means

(23) for biasing the cutting blade (45) to an

inoperative position on rail assembly (10). It

would have been obvious to one having ordinary

skill in the art to provide Mori with spring

36a

means as taught by Spaulding in order to bias

the cutting blade to an inoperative position such

that activation by a user is necessary in order to

effect a cut thus preventing the work from being

cut unless such is desired. As to the springs

being leaf springs, it is noted that it would have

been obvious to one having ordinary skill in the

art to provide the spring means of the modified

device of Mori to be leaf springs since the use of

leaf springs is a well-known and equivalent

biasing means.

The examiner rejected proposed claim 9 in a separate

paragraph. That claim depended from independent claim 7 and

dependent claim 8, which disclosed a rectangular rail assembly

with longitudinal opening on which is mounted a carriage

assembly trolley. Dependent claim 9 added to these claims the

iinuiction that the trolley “include a pair of spring blades

aligned in the inside of the rail for biasing said trolly to a

neutral position on said rail.” The examiner rejected this

addition as being unpatentable over Moni in view of Spaulding,

using largely the same language as that quoted above but

specifying that “Mori lacks a pair of spring blades for biasing

the trolley to a neutral position” and that Spaulding discloses “‘a

pair of springs (23) for biasing the trolley (70) to a neutral

position” (emphasis added).

3. Plaintiffs’ first response and amendment

On November 11, 1993, plaintiffs filed its response and

amendment to the August 26 office action. Plaintiff amended

proposed claim 1, replacing “means for biasing said cutting

blade to an inoperative position” with “means for biasing said

carnage assembly to an inoperative position.” Proposed claim

37a

7 was amended to include the following phrase: “Means for

supporting and biasing said carriage assembly to an inoperative

position on said rail assembly.” In the “Remarks” section of

their response, plaintiffs stated that claim 7 “as amended” called

for a means for supporting and biasing the carriage assembly to

an inoperative position on the rail assembly, allowing the

operator to control the cutting force applied to the paper by

moderating the downward force applied to the carriage

assembly. Plaintiffs emphasized that the operator has no such

control with the Mori device.

Plaintiffs pointed out that in the device disclosed in

claims | and 10, only the carriage assembly is biased to an

inoperative position, as opposed to the Spaulding prior art,

where the springs “bias the entire rail 10 to an inoperative

position.” Plaintiffs stressed that to utilize the Spaulding

device, an operator must push down the entire rail, while the

operator of the claimed invention need only depress the carriage

assembly “to move the cutter blade from the inoperative

position to the operative position.” Plaintiffs argued that “[t]o

incorporate the teaching of Spaulding into Mori would require

a complete restructuring of the Mon disclosure, since the rail 35

of Mon is pivotally connected at one end to the rail support 41

and calls for a set of springs to hold the blade in the operative

position.” Additionally, plaintiffs contended that their

dependent claims added features that “further define over Mori

and Spaulding.” Specifically, claim 4 “includes a trolley having

a pair of leaf springs which provide both a support for the

carnage on the rail as well as biasing the trolley to the

inoperative position.” In defense of dependent claim 9,

plaintiffs argues as follows:

It should be noted that Spaulding only shows a

pair of springs for biasing the track away from

the cutting board. ... There is no disclosure in

38a

Spaulding of a pair of spring blades formed on

said trolley and aligned in the inside of the rail

for supporting the trolley for sliding movement

in the rail as well as biasing the trolley to a

neutral position. .

4. Second office action

On December 28, 1993, the Patent and Trademark

Office rejected amended claims 1, 7 and 10. However, the

examiner indicated that claims 4, 5 (which depended upon 4

and disclosed a self-healing cutting pad) and 9 were objected to

as being dependent upon rejected base claims “but would be

allowable if rewnitten in independent form including all of the

limitations of the base claim and any intervening claims.” The

examiner addressed plaintiffs’ arguments regarding claims 1, 7

and 10 as follows:

Applicant argues that in Spaulding the entire rail

is biased into an inoperative position and to

incorporate such a teaching into Mori would

require a complete restructuring of Mori. While

it is true that the entire rail is biased into an

inoperative position, the claims merely recite

‘means for biasing the carriage assembly to an

inoperative position on said rail assembly.’ In

Spaulding, the carriage assembly is biased to an

inoperative position, as recited, even though the

rail assembly is biased as well. Further, Mori

would not require a complete restructuring but

merely the addition of biasing means biasing the

carriage assembly to an inoperative position.

BRT ae BY OLIN FERRER TY ARE ORES

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PER s SE, Wk SAN PNie crit eae tel «aos an et

39a

5. Plaintiffs” sec

On January 12, 1994, plaintiffs submitted a second

response and amendment, amending proposed claims 1, 7 and

10. Essentially, plaintiffs amended claims 1. and 7 to include

the structures of claims 4 and 9, respectively, as recommended

by the examiner in the second office action. Specifically,

plaintiffs added to claim | the language “‘said biasing means

comprises a pair of leaf springs mounted on said carriage

assembly to an inoperative position on said rail” and to claim 7

“a pair of spring blades on said carriage assembly”; these

amendments transformed the claims into the versions approved

ultimately as claims | and 6 of the ‘001 patent. Additionally,

plaintiffs amended proposed independent claim 10 by replacing

“means biasing said carriage assembly to an inoperative

position on said rail assembly” with “a spring assembly formed

on said carriage assembly for biasing said carriage assembly to

an inoperative position on said rail assembly.” In essentially

this form, proposed claim 10 was allowed as claim 8 of the ‘011

patent.

On January 27, 1994, in response to plaintiffs’ January

12, 1994 amendments, the Patent and Trademark Office issued

a Notice of Allowability for the ‘399 application. Subject to

minor subsequent claim amendments, the ‘399 application was

issued as the ‘001 patent on June 21, 1994.

OPINION

To show non-infringement on a motion for summary

judgment, a moving defendant must establish that it cannot be

genuinely disputed that at least one element of the patent claim

at issue is not found in the accused device either literally or

figuratively. See SMI Corp. v. Cardiac Resuscitator Corp., 844

40a

F.2d 1576, 1582 (Fed. Cir. 1988). If every element of a claim

is embodied in the accused device, defendant is guilty of literal

infringement. See Mannesmann Demag Corp. v. Engineered

Metal Products Co., 793 F.2d 1279, 1282 (Fed. Cir. 1986). If

the accused device differs from the patent claims, but those

differences are insubstantial, defendant may be guilty of

infringement under the doctrine of equivalents. See Athletic

Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed.

Cir. 1996).

In this action, plaintiffs raise a variety of literal and

doctrine of equivalents charges. They assert literal infringement

only as to claim 8 and dependent claim 9 of the ‘011 patent,

which disclose a “spring assembly” for biasing a carriage

assembly to an inoperative position. As a backup position,

plaintiffs argue that defendant’s device infringes claims 8 and

9 under the doctrine of equivalents. In addition, plaintiffs raise

doctrine of equivalents charges under independent claims 1, 2,

5 and 6, which include either leaf spring or spring blade

elements. On this motion for summary judgment, defendant

challenges plaintiffs’ literal infringement charges and asserts

that the doctrine of prosecutorial estoppel, or file wrapper

estoppel, prevents plaintiffs from relying on the doctrine of

equivalents; defendant does not raise the issue whether the

differences between its device and the claimed inventions are

substantial enough to avoid a finding of infringement under the

doctrine of equivalents.

A. Literal Infringement

The literal infringement inquiry begins with construction

of the scope and meaning of the claim without regard to the

accused product and proceeds to a determination whether the

accused device infringes the claim as properly construed. See

4la

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581-82

(Fed. Cir. 1996); Vv i i

16 F.3d 394, 397 (Fed. Cir. 1994). Claim construction is a

question of law to be determined by the court, see Markman v.

Westview Instruments, Inc., 116 S. Ct. 1384, 1396 (1996),

while the question of infringement is factual. See Hormone

904 F.2d 1558,

1562 (Fed. Cir. 1990). However, where the parties do not

dispute any relevant facts regarding the accused product but

disagree over the meaning of the claim, the questions of claim

construction and literal infringement become one issue that is

appropriately addressed on summary judgment. See Athletic

Alternatives, 73 F.2d at 1578.

In construing the terms of a claim, courts are to consider

first all relevant intrinsic evidence, which includes sources

within the patent record. See Vitronics Corp., 90 F.3d at 1582.

Primarily, courts begin with the language of the claim itself,

giving its terms their ordinary and customary meaning unless it

is apparent from the patent and prosecution history that the

inventor used them differently. See id.; Hoechst Celanese Corp.

y. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996);

j 9 F.3d 948, 951 (Fed.

Cir. 1993). Next, it is necessary to review the specification and

its written description of the invention. “For claim construction

purposes, the description may act as a sort of dictionary, which

explains the invention and may define terms used in the

claims.” Markman v. Westview Instruments, Inc., 52 F.3d 967,

979 (Fed. Cir. 1995), aff'd, 116 S. Ct. 1384. The final source

of intrinsic evidence relevant to claim construction is the

patent’s prosecution history, which limits interpretations of

claim terms by excluding those that have been disclaimed

during prosecution. See Vitronics, 90 F.2d at 1582. Extrinsic

evidence of claim construction, such as expert testimony, is to

be utilized only in the rare occasion in which the patent record

42a

is insufficient to allow the court to construe the disputed terms.

Id. at 1585. Even in these situations, an expert’s opinion as to

the meaning of a claim should be treated with the “utmost

caution.” Id.

In its opening brief, defendant identifies “two critical

elements common to the independent claims which are most

relevant to this motion” as being the requirements of a carriage

assembly and a means for biasing the carriage assembly to an

inoperative position on the rail. Def.’s Mem. Supp. Sum. J. at

14. Inits reply brief, however, defendant contests an additional

element of claim 8, asserting that the accused device does not

contain “a spring assembly formed on said carriage assembly.”

Understandably, plaintiffs object to defendant’s raising this new

argument in reply. Defendant disputes that the argument is

newly raised, citing two brief statements in its opening

memorandum regarding the ‘001 patent’s “formed on”

requirement. It is questionable whether these passages, which

did not refer to claim 8 directly, raised defendant’s additional

arguments with sufficient precision to allow them to serve as a

basis for summary judgment. See Cooper v. Ford Motor Co.,

748 F.2d 677, 680 (Fed. Cir. 1984) (“[T]he Federal Rules do

not contemplate that a court may dispose of a cause by

summary judgment, when the basis for the judgment was not

raised by the movant with sufficient precision for the

nonmovant to respond.”). However, I need not resolve this

question because defendant’s assertion that its device does not

include a “spring assembly formed on said carriage assembly”

is premised on a faulty construction of claim 8 and will be

rejected.

The relevant portion of claim 8 of the ‘001 patent

43a

discloses “a spring assembly formed on said Carriage

assembly.” Defendant contends that 1) the term “spring

assembly” as used in the claim does not include a helical spring

and that 2) “formed on said carriage assembly” means “created

in contact with or‘as an integral part of the carriage assembly.”

Defendant’s effort to exclude helical springs from the scope of

claim 8 faces a tough road, as the term “spring assembly”

appears unambiguous in its coverage of all manner of spring

devices. Defendant points to nothing in the claim language or

the specifications demonstrating that the inventor used the term

in a manner different from its ordinary meaning. The fact that

the preferred embodiment described in the patent used leaf

springs is irrelevant; a patent claim is not limited to a preferred

embodiment disclosed in the specifications. See Transmatic,

Inc. v. Gulton Industries, Inc., 53 F.3d 1270, 1277 (Fed. Cir.

1995).

Defendant’s only remaining argument in support of its

construction is that plaintiffs disclaimed coverage of helical

springs in prosecuting claim 8. This assertion is unsupported by

the prosecution history. In the correspondence regarding the

patent application, neither the examiner nor plaintiffs made any

reference to helical springs. Moreover, the patent examiner

emphasized in its first office action that the leaf springs and

spring blades disclosed in other claims were well known

equivalents of the spring means used in the prior art, which

happened to be helical springs. Defendant’s contention that the

examiner switched her position on this point at the urging of

plaintiffs is without support in the record; the examiner never

indicated that she had reversed her position on the equivalency

of these structures and plaintiffs never argued that she should

do so. Defendant cites two passages in plaintiffs’ first

amendment to the parent application in which plaintiffs refer

specifically to leaf springs and spring blades in distinguishing

their claims from the prior art. These passages are quoted out

44a

of context. They were made in defense of the precursors to

claims | and 6, neither of which include the term “spring

assembly,” and they have no bearing on claim 8.

Defendant’s proposed construction of claim 8's “formed

on” limitation to mean “created in contact with or made an

integral part of” is based on the dictionary definition of the

word “form.” According to defendant, the spring assembly in

its accused device is not “formed on” the carriage assembly

under this definition. Defendant does not explain exactly how

it reaches this conclusion; the biasing spring in its device is

certainly in contact with the carriage assembly and made an

integral part of that structure. See Figs. A and B, pp. 10 and 11.

Defendant emphasizes that the helical spring is not attached to

or molded to the carriage assembly, but these requirements are

not part of the dictionary definition defendant purports to rely

on. In any event, the “formed on” requirement of claim 8

applies to the “spring assembly” of the accused device, not just

the helical spring. By defendant’s own definition, assembly

means a collection of parts fitted together to form a whole. In

the accused device, the helical spring is fitted together with a

finger, which holds it in place and enables it to function. The

term “spring assembly” covers both components, meaning that

the spring assem} .v is molded to the carriage assembly.

The parties have introduced conflicting expert testimony

interpreting the “spring assembly formed on said carriage

assembly” language. Because the meaning of these terms is

discernible from the patent record, recourse to extrinsic

evidence is inappropriate. See Vitronics, 90 F.3d at 1585.

Defendant makes one final argument on this point, asserting

that the construction of this limitation proffered by plaintiff and

now adopted by this court renders claim 8 unpatentable over the

Mori prior art, because Mori disclosed a carriage assembly that

included a similar spring assembly. Although it is true that this

45a

particular claim limitation teaches on the Mori device, Mori

lacks several other elements of claim 8, including a means to

bias the carriage assembly to an inoperative position. The

patent examiner recognized this point repeatedly. It disposes of

defendant’s argument.

Zz Biasing carnage assembly to inoperative position

Claim 8 requires that the spring assembly discussed

above be formed on the carriage assembly “for biasing said

carnage assembly to an inoperative position on said rail

assembly.” This limitation is incorporated through similar

language in the other dependent claims of the ‘001 patent as

well. Defendant interprets the limitation as requiring that the

spring assembly be structured to influence, or move, the entire

carnage assembly; plaintiffs argue that it requires the spring

assembly to be structured to withdraw the blade from the

cutting surface, even if only a portion of the carriage assembly

is moved in the process. This dispute centers on the meaning

of the term “biasing,” or “bias.” If its means to influence

directionally, defendant’s interpretation is correct. If it includes

altering or reconfiguring in a more general sense, plaintiffs

prevail.

Citing Webster’s New Twentieth truy Diction

(2d ed.), defendant contends that the ordinary meaning of the

verb bias is “to incline to one side” or to “give a particular

direction to.” The patent language supports this definition. The

claim requires that the spring means bias the carriage assembly

“to an inoperative position” (emphasis added). The implication

is that, in being biased, the carriage assembly is actually

repositioned, or moved to a different location. Similar passages

are found in the specifications: “The trolley includes a spring

assembly for biasing the carriage assembly to a storage position

46a

on the rail assembly.” Col. 2, Ins. 1-3. “When released, the

springs 48 will bias the carriage assembly upward to clear the

blade from the paper.” Col. 4, Ins. 12-14. Both of these

statements use “bias” to mean influence directionally, implying

that the entire object being biased changes locations. The use

of the term throughout the patent prosecution is consistent with

this definition. In the first amendment and response, plaintiffs

described the springs in the Spaulding prior art as “‘bias[ing] the

entire rail to an inoperative position.” The patent examiner

responded to this argument in the second office action by

pointing out that “[iJn Spaulding, the carriage assembly is

biased to an inoperative position . . . even though the rail

assembly is biased as well.”

Nowhere is the work “biased “ used to denote the

reconfiguration of the biased object, whereby portions of the

item are moved and portions remain stationary, rather than the

complete relocation of the object. Nor do plaintiffs provide a

definition for the term that supports their position. Seemingly

accepting the definition of bias advanced by defendant,

plaintiffs contend that if they had intended claim 8 “to require

biasing of the entire carriage assembly, that is what the claim

language would have said.” Pls.” Mem. Opp. Summ. J. at 20.

However, the corollary of this argument rings with greater

force: if plaintiffs had wanted the claim to include biasing of a

portion of the carriage assembly, they should have specified as

much. It is more logical to assume that when a general

reference to an object is unqualified by “entire” or “partial,” the

reference is to that object as a whole.

The language in claim 8 disclosing a “spring assembly

formed on said carriage assembly for biasing said carriage

assembly to an inoperative position on said rail assembly”

teaches that the spring assembly be configured to provide a

directional influence to the entire carriage assembly. Because

icra ata

47a

the undisputed facts reveal that defendant’s accused device does

not include a spring assembly that can exert such directional

influence, that device does not literally infringe claim 8 or its

dependent claim 9.

B. Doctrine of Equivalents

An accused product that differs from a patent claim and

does not infringe literally can infringe the patent nonetheless

under the doctrine of equivalents “if its difference from the

claim is insubstantial from the perspective of one of ordinary

skill in the relevant art.” Athletic Alternatives, 73 F.3d at 1581.

An equivalent exists if an individual familiar with the relevant

technology would have known that the substituting ingredient

in the accused device was interchangeable with the ingredient

disclosed in the patent. See Wamer-Jenkinson Co. v. Hilton

Davis Chemical Co., 117 S. Ct. 1040, 1047 (1997) (citing

Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S.

605, 609 (1950)). In Warner-Jenkinson, the United States

Supreme Court discussed the doctrine of equivalents at length

and reaffirmed its vitality. To ensure that a patent’s coverage

is not extended beyond the scope of its claims, the Court held

that the doctrine of equivalents must be applied to each

limitation of a claim rather than to the invention as a whole. Id.

at 1049. Therefore, an accused device must embody all of the

elements of the relevant patent or provide an equivalent to those

elements that differs from the claim only insubstantially.

Although no specific formula exists for determining whether

two elements are equivalent, the “function-way-result” test is

the test most often used when analyzing mechanical devices.

See id. at 1054. Under this test, an element of the accused

device is equivalent if it performs substantially the same

function, in substantially the same way, to produce substantially

the same overall result. See Dolly, Inc. v. Spalding & Evenflo

48a

Companies, 16 F.3d 394, 397 (Fed. Cir. 1994).

Plaintiffs may prevail on their infringement action under

claim 8 and 9 under the doctrine of equivalents if they

demonstrate that the helical spring biasing mechanism of the

accused device performs substantially the same function, in

substantially the same way, to produce substantially the same

result as the biased carriage assembly element disclosed in

those claims. If this equivalence is established, plaintiffs may

prevail under claims 1, 2, 5 and 6 as well by demonstrating

additionally that defendant’s helical spring is equivalent to the

leaf spring and spring blade elements disclosed therein.

However, defendant does not challenge plaintiffs’ ability to

make these equivalency showings in this motion for summary

judgment. Instead, defendant contends that the doctrine of

prosecution history estoppel precludes plaintiffs from asserting

any equivalency infringement on the basis of these elements of

the ‘001 patent.

The doctrine of prosecution history estoppel, also

known as “file wrapper estoppel,” limits infringement actions

against otherwise equivalent structures. The theory behind

prosecution history estoppel is that a patent holder should not

be allowed to enforce its patent under the doctrine of

equivalents to cover subject matter that it surrendered during

prosecution to obtain allowance of its claims. See Pall Corp. v.

Micron Separations, Inc., 66 F.3d 1211, 1218 (Fed. Cir. 1995);

Hoganas AB, 9 F.3d at 951-52. Estoppel applies only if the

purpose of the surrender was to avoid prior art or address

similar patentability concerns. See Warmer-Jenkinson, 117 S.

Ct. at 1049 (rejecting arguments that any surrender of subject

matter during prosecution precludes recapturing of that matter,

regardless of the reason for the surrender). Application of

prosecution history estoppel is a question oflaw. See American

Permahedge, Inc. v. Barcana, Inc., 105 F.3d 1441, 1446 (Fed.

49a i

Cir. 1997).

In Wamer-Jenkinson, the Supreme Court addressed a

situation in which the prosecution history did not reveal the

reason for the claim amendment at issue. The court held that in

such instances, a presumption arises “that the PTO had a

substantial reason relating to patentability for including the

limiting element added by the amendment.” Id. at 1051. The

patent holder can overcome the presumption by demonstrating

that the purpose of the amendment was unrelated to

patentability. Jd. at 1054. In establishing this rebuttable

presumption, the court sought 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.” Jd. at 1051.

3 Biasing said carriage assembly

To show infringement of any of the claims of the ‘001

patent, plaintiffs must demonstrate that the spring assembly in

the accused device, which biases the portion of the Carriage

assembly holding the cutting blade, is equivalent to the

common element of claims 1, 6 and 8 requiring specific spring

means “for biasing said carriage assembly.” However, this

language did not appear in the original version of claim i

which disclosed a means “for biasing said cutting blade.”

During prosecution of the patent, plaintiffs amended claim 1 by,

among other things, replacing the original limitation which the

phrase “for biasing said carriage assembly.” According to

defendant, this action stops plaintiffs from arguing that a device

in which the cutting blade is biased is equivalent to a device in

which the entire carriage assembly is biased. Although the

amendment on which defendant relies is unique to claim 1

50a

(neither claims 6 nor 8 ever included reference to a biased

cutting blade), defendant argues persuasively that the estoppel

consequences of claim 1, if any, should extend throughout the

patent to provide for consistent interpretation of claim terms.

See American Permahedge, 105 F.3d at 1446 (Fed. Cir. 1997).

The patent examiner rejected claim 1 as originally

proposed as being unpatentable over Mori in view of Spaulding.

(Additionally, the examiner raised several minor

“indefiniteness” objections to language in claim | that are not

relevant here.) Specifically, the examiner noted that Spaulding

discloses a paper cutter with spring means for biasing the

cutting blade. In the same office action, the examiner rejected

proposed dependent claim 9, which disclosed a biased trolley,

noting that Spaulding disclosed a means for biasing the trolley.

In their first amendment and response, plaintiffs made several

changes to claim 1, one of which was the substitution of

“biasing the carriage assembly” for “biasing the cutting blade.”

However, in defending the patentability of its newly amended

claim, plaintiffs made no reference to the switch from “cutting

blade” to “carriage assembly.” Instead, plaintiffs emphasized

that the Spaulding invention required the operator to depress the

entire biased rail assembly in order to cut paper. In the second

office action, the patent examiner rejected the amended claim

1, explaining that Spaulding disclosed a biased carriage

assembly as well.

This patent history gives no indication why plaintiffs

amended claim 1 by substituting “carriage assembly” for

“cutting blade.” The amendment did nothing to distinguish

over the Spaulding prior art, in which the entire rail assembly

was biased. It was clear from the first office action that such an

amendment would be irrelevant vis 4 vis the examiner’s prior

art objection, given her statement regarding proposed claim 9

that Spaulding disclosed a biased trolley; under the patent

Sla

specifications, the trolley constituted the primary component of

the carriage assembly and, because it supported the remaining

components, could not be biased without biasing the entire

carnage assembly. The amendment does not address any of the

minor indefiniteness objections made by the examiner.

Because the patent record provides no explanation for

the amendment, defendant contends that estoppel should be

presumed under Wamer-Jenkinson. { am not so certain.

Underlying the Supreme Court’s decision in creating the

presumption was a deference to the role of the Patent and

Trademark Office in controlling the scope of claims and the

premise that the PTO had ordered the amendmen: at issue. See

Wamner-Jenkinson, 117 S. Ct. at 105] (“the court should

presume that the PTO had a substantial reason related to

patentability for including the limiting element added by the

amendment”), 1054 (presumption overcome “if the patent

holder demonstrates that an amendment required during

prosecution had a purpose unrelated to patentability”)

(emphasis added). (I note that the account of the prosecution

history in Wamer-Jenkinson does not specify that the PTO

recommended the specific limitation adopted. Id, at 1050).

It is questionable whether the presumption should be

triggered by an amendment so detached from the objection of

the patent examiner as is the case here. Even if the presumption

did lie, the burden on plaintiffs to rebut it would not be as

onerous as defendant argues. The Federal Circuit has instructed

courts to approach such determinations with careful discretion,

balancing “the importance of public notice and reliance on the

prosecution history, as well as the need for fairness to the

patentee.” Hi i v. W. :

Co., 114 F.3d 1161, 1163 (Fed. Cir. 1997), on remand from

Wamer-Jenkinson, 117 S. Ct. 1040. Citing the concurring

opinion of Justice Ginsberg in Warner-Jenkinson, the Federal

52a

Circuit urged particular caution in cases such as this where the

patent was prosecuted and issued before Warner-Jenkinson was

decided, with the applicant and examiner unaware of the

presumptions that might arise from any unexplained

amendments. See Hilton Davis Chemical, 114 F.3d at 1163;

see also Warner-Jenkinson, 117 S. Ct. at 1055 (Ginsberg, J.,

concurring ) (“The new presumption, if applied woodenly,

might in some instances unfairly discount the expectations of a

patentee who had no notice at the time of patent prosecution

that such a presumption would apply.”)

Plaintiffs find themselves in exactly the position

anticipated by Justice Ginsberg and the Federal Circuit: unable

to come up with evidence explaining why they amended claim

1 by substituting “carriage assembly” for “cutting blade.”

Apparently because they are without recourse to the testimony

of the lawyer who prosecuted the patent, plaintiffs have

submitted the averments of the inventor that it was his

“understanding” that the amendment was intended to de-

emphasize the cutting function of the invention, which was

capable of being fitted with blades that perforated and scored

paper as well. Boda Aff. ¥] 9-12. In addition to the questions

regarding this witness’s personal knowledge regarding the

amendment decision, this justification is severly undercut by the

fact that claim 1, as amended and issued, maintained as a

specific element a “circular cutting blade.” Additionally, the

term “cutting blade” as used in the specifications refers to all of

the interchangeable blades, including the perforating blade.

Col. 3, Ins. 59-66.

However, plaintiffs’ inability to demonstrate exactly

why they adopted this amendment is offset by the strong

evidence in the prosecution history that the amendment did not

relate to patentability. As discussed above, the examiner

emphasized that her prior art objections were based on the

53a

Spaulding spring mechanism, which biased the entire rail

assembly, including the carriage assembly and cutting blade.

Contrary to defendant’s suggestions, there is no suggestion in

the record that the examiner required plaintiffs to distinguish

their device from the partially biased carriage assembly of Mori.

In fact, understandably influenced by the fact that the bias in the

Mori device was to an operative rather than inoperative

position, the examiner did not even refer to the fact that Mori

disclosed a biased cutting blade. The examiner’s prior art

rejection in the first office action of the biased trolley in

dependent claim 9 makes it unreasonable to infer that the switch

to a biased carriage assembly in claim 1 was intended to avoid

that same prior art. The facts that the examiner said nothing in

the first office action to prompt or solicit this particular

amendment and that the first amendment to claim 1 included

several other technical changes are further evidence to an

observer of the prosecution history that the dropping of the

biased cutting blade reference did not go to patentability.

Because the prosecution history was sufficient to inform

the reasonable public that the amendment to claim 1

substituting “carriage assembly” for “cutting blade” was not to

avoid prior art or for any other patentability consideration, |

conclude that plaintiffs are not estopped from pursuing their

infringement action as to this elemeni under the doctrine of

equivalents. See Instituform Technologies, Inc. v. Cat

Contracting, 99 F.3d 1098, 1107-08 (Fed. Cir. 1996) (“{T]he

standard for determining what subject matter was surrendered

is objective and depends on what a competitor, reading the

prosecution history, would reasonable conclude was given up

by the applicant.”). This result is consistent with the recent

directives of the Supreme Court and the Federal Circuit that

prosecutorial estoppel determinations account for the patent’s

notice function. See Warner-Jenkinson, 117 S. Ct. at 1051;

Hilton Davis, 114 F.3d at 1163. I note that this conclusion

54a

applies equally to plaintiffs’ equivalency arguments regarding

the identical elements of claims 6, 8 and 9.

z. Equivalency of defendant’s helical spring

It is undisputed that the accused device does not literally

infringe claims 1, 2, or 5, which discloses a biasing means

comprising “a pair of leaf springs mounted on said carriage

assembly,” or claim 6, which discloses “a pair of spring blades

formed on said carriage assembly for supporting and biasing

said carriage assembly.” However, plaintiffs seek to establish

that the helical spring assembly in defendant’s device is the

equivalent of the disclosed leaf springs and spring blades.

Defendant asserts that plaintiffs are estopped from pursuing

equivalency arguments as to these claim elements because they

were added by amendment during the prosecution of the ‘001

amendment.

Defendant contends that plaintiffs disclaimed all

coverage of helical springs by asserting limitations specifying

blade and leaf spring structures. Prior to these amendments, the

claims disclosed a “means for biasing” without specifying

whether that means utilized a spring. According to defendant,

these added limitations were necessary and intended to

distinguish plaintiffs’ invention from the helical spring

structures of the Mori and Spaulding prior art. This argument

is a non-starter. Claim 8 of the same patent discloses a device

nearly identical to those taught in claims | and 6, the primary

distinction being the disclosure of a general “spring assembly”

in claim 8 in place of the blade or leaf springs specified in 1 and

6. Because the “spring assembly” limitation in claim covers

defendant’s helical spring structure literally (see above), it

would be illogical to conclude that in prosecuting the patent

plaintiffs surrendered coverage of such structure, let alone that

55a

such surrender was necessary to patentability. Further, as

discussed above, the prosecution history reflects an

understanding between the examiner and plaintiffs that the

helical springs of the prior art and the blade and leaf springs

disclosed in the ‘001 patent were “a well-known and equivalent

biasing means.”

In support of its position, defendant identifies two

passages in plaintiffs’ response to the first office action. In

those passages, plaintiffs defended the patentability over prior

art of two dependent claims, the limitations of which were later

adopted as the spring structures in claim 1 and 6. The passages

identified by defendant, along with their appropriate context,

read as follows:

Claim 4 depends from claim 3 and includes a

trolley having a pair of leaf springs which

provide both a support for the carriage on the

rail as well as biasing the trolley to the

inoperative position.

***

Claim 9 has been rejected as being unpatentable

- . . over Mori in view of Spaulding. . . . [I]t

should also be noted that Spaulding only shows

a pair of springs for biasing the track away from

the cutting board. . . . There is no disclosure in

Spaulding of a pair of spring blades formed on

said trolley and aligned in the inside of the rail

for supporting the trolley for sliding movement

in the rail as well as biasing the trolley to a

neutral position.

It is clear from these passages that, in distinguishing over prior

56a

art, plaintiffs did not rely on the fact that their claims disclose

blade and leaf springs rather than helical springs. Plaintiffs’

emphasis is on the location of the springs: that they are attached

to the trolley and bias that trolley vis 4 vis the rail, rather than

that they bias the entire rail. By amending independent claims

1 and 6 to include limitations similar to those described above,

plaintiffs were disclaiming biasing means that act on the rail as

a whole; they were not disclaiming helical springs. See Black

& Decker, Inc. v. Hoover Service Center, 886 F.2d 1285, 1295

(Fed. Cir. 1989) (prosecution history estoppel bars equivalency

claims against matter specifically surrendered by amendment,

not every equivalent claim based on amended elements).

Because the spring structure amendments to claims |!

and 6 did not surrender equivalency coverage over the helical

spring assembly of the accused device, plaintiffs will be

allowed to pursue their infringement actions under claims 1, 2,

5 and 6 under the doctrine of equivalents.

ORDER

IT IS ORDERED that defendant Hunt Manufacturing

Company’s motion for summary judgment is GRANTED with

respect to plaintiffs Fiskars, Inc. and Fiskars OY AB’s claims

of literal infringement of claims 8 and 9 of the ‘001 patent and

is DENIED in all other respects.

Entered this 30" day of March, 1998.

BY THE COURT:

BARBARA B. CRABB

District Judge

57a

NOTE: Pursuant to Fed. Cir. R. 47.6 this order

is not citable as precedent. It is a public order.

United States Court of Appeals

for the Federal Circuit

98-1560, -1566

FISKARS, INC. and FISKARS OY AB,

Plaintiffs-Appellees,

HUNT MANUFACTURING CO.,

Defendant-Appellant,

and

JOSEPH F. POSILLICO,

Sanctioned Party-

Appellant.

ORDER

A combined petition for panel rehearing and rehearing

en banc was filed by the defendant-appellant, Hunt

Manufacturing Co., and was referred first to the merits panel

that heard the appeal. Thereafter, the petition for rehearing en

banc was referred to the circuit judges who are in regular active

service;

2000.

OCT 10 2000

58a

Upon consideration thereof,

IT IS ORDERED THAT:

(1) The petition for rehearing is denied.

(2) The petition for rehearing en banc is denied.

The mandate of the Court will issue on October 17,

Circuit Judge Linn did not participate in the vote.

FOR THE COURT,

ce:

Jan Horbaly

Clerk

Joseph F. Posillico, Esq.

Kevin R. Casey, Esq.

David J. Harth, Esq.

ee ee eee ae a ee

59a

cited as disclosing a paper cutter including a spring

means for biasing a cutting blade 45 to an inoperative

position on rail assembly 10.. However, Spaulding

discloses a pair of fixed blades 45 mounted in a cap

member’ 70 which is mounted on @& guide rail 10. A pair of

springs 23 bias the entire rail 10 to an inoperative

position. The entire rail must be pushed down to hold the

paper in position with the cutting blade 45 depending in a

recess 81. The cutting blade assembly is then pushed

transversely across the rail. To incorporate the teaching

of Spaulding into Mori would require a complete

restructuring of the Mori disclosure, since the rail 35 of

Mori is pivotally connected at one end to the rail support

41 and calls for a set of springs to hold the blade in the

operative position. Claims 1 and 10, as amended, call for

a longitudinally extending rail assembly mounted on the

cutting board for pivotal movement about the longitudinal

axis of the rail assembly. A carriage assembly is mounted

on the rail assembly which is biased to an inoperative

position on the rail assembly. The carriage assembly is

pushed down by the operator to move the cutter blade from

the inoperative position to the operative position for

cutting or trimming the paper sheet. The factual inquiry

set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148

U.S.P.Q. 459, 467 (1966), must be applied to establish a

background for determining obviousness.

-7- 1

A0257 tena

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.