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Keywords

trialburden of proofpatentcorporation

patenttrademark

Related Cases

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 122 S.Ct. 1831, 152 L.Ed.2d 944, 70 USLW 4458, 62 U.S.P.Q.2d 1705, 02 Cal. Daily Op. Serv. 4539, 2002 Daily Journal D.A.R. 5803, 15 Fla. L. Weekly Fed. S 320

Facts

Festo Corporation holds two patents for an industrial device known as a magnetic rodless cylinder. After the patent examiner rejected the initial application due to defects in description, Festo amended the application to include specific limitations. Following the issuance of the patents, SMC entered the market with a similar device, prompting Festo to sue for patent infringement under the doctrine of equivalents. The District Court ruled in favor of Festo, but the Federal Circuit later reversed this decision, applying prosecution history estoppel to bar Festo's claims.

Issue

Whether prosecution history estoppel applies to any claim amendment made to satisfy the Patent Act's requirements, and whether such estoppel bars claims of equivalence under the doctrine of equivalents.

Rule

Prosecution history estoppel applies to any amendment that narrows a claim to comply with the Patent Act, not just those made to avoid prior art. The patentee has the burden of proving that an amendment did not surrender a particular equivalent in question. The scope of a patent is not limited to its literal terms but includes all equivalents to the claims described.

Analysis

The court analyzed the nature of the amendments made by Festo during the patent application process. It determined that the amendments narrowed the scope of the claims, which invoked prosecution history estoppel. The court emphasized that the patentee cannot argue that the surrendered territory included unforeseen equivalents. The burden of proof lies with the patentee to demonstrate that the amendment did not surrender the equivalent in question.

Prosecution history estoppel requires that patent claims be interpreted in light of the proceedings before the Patent and Trademark Office (PTO). When the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised an unforeseen equivalent.

Conclusion

The Supreme Court held that prosecution history estoppel may apply to any claim amendment made to satisfy the Patent Act's requirements, and that such estoppel does not necessarily bar all claims of equivalence.

Vacated and remanded.

Who won?

The prevailing party in this case is SMC, as the Federal Circuit reversed the District Court's ruling in favor of Festo. The court found that Festo's amendments during the patent application process invoked prosecution history estoppel, which barred Festo from claiming that SMC's device infringed under the doctrine of equivalents. This decision underscored the importance of the prosecution history in determining the scope of patent claims.

The Federal Circuit reversed, holding that prosecution history estoppel barred Festo from asserting that the accused device infringed its patents under the doctrine of equivalents.

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