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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 2001
- **Citation:** 532 U.S. 972

## Text

“tH ER

(") 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,

V.

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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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
aa casseensessnscecce 18

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.,

4
|
{
|

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).

2

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

3

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

4

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.

6

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.

7

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

8

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

9

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

10

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).

1]

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

12

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

13

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

2

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).

14

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.

15

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

16

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

3
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

17

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

18

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

la
(Cite as: 221 F.3d 1318)

United States Court of Appeals,
Federal Circuit.

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

2a

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

3a

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

4a

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

Sa

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

6a

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

7a

"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

8a

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

9a
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
v.
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
6.

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.

Ne

Fig. A

8
7
5
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.

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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

s
i.
i
Ss
2
5
=
i
:
a

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,
v.
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.
Th

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386010_0809%3A1. Public record. Not legal advice.