® BuscaLegis.ccj.ufsc.Br
The Doctrine of Equivalents: A Matter of Chance and Confusion
I. INTRODUCTION
It has been over 150 years since the Supreme Court first set forth the basis for the doctrine of equivalents.[1] Despite this long history, the doctrine is still misunderstood and misapplied. More importantly, the doctrine of equivalents is precluded by estoppel if there was a narrowing amendment made for purposes related to patentability, such as avoidance of prior art. Under this application, the doctrine of equivalents is purely a matter of chance, depending on whether the patent drafter or the Patent and Trademark Office examiner happens to find the best prior art before the patent issues. Such fortuitousness leaves little guidance for the patentee or the patent attorney. A simple return to the basic premise for the doctrine will reduce, or perhaps eliminate, some difficulties which exist with the doctrine today. However, many unanswered questions remain regarding estoppel and equivalents.
II. THE
SUPREME COURT'S DEVELOPMENT AND TREATMENT OF THE DOCTRINE OF EQUIVALENTS
In 1853, the Supreme Court explained in Winans v. Adam:
It is generally true, when a patentee describes a machine, then claims it as described, that he is understood to intend to claim, and does by law actually cover, not only the precise forms he has described but all other forms which embody his invention; it being a familiar rule that, to copy the principle or mode of operation described is an infringement, although such copies should be totally unlike the original in form or proportions.[2]
The Supreme Court further explained in Winans that a patent would be valueless if the defendant can simply change the form of the invention claimed.[3] While the Supreme Court didn't use the terminology "doctrine of equivalents," the concept was established. Thus, where the patentee describes the invention and claims it in the form that most perfectly embodies it, the patentee is deemed by law to claim every form in which the invention may be copied, unless there is a manifest intention to disclaim some of those forms.[4] This intent to disclaim particular subject matter is the key to solving the current difficulties with application of the doctrine of equivalents.
The Supreme Court first used the term "doctrine of equivalents" in McCormick v. Talcott.[5] In McCormick, the Court stated that equivalents apply to colorable imitations of the patented invention.[6]
As explained 20 years later by the Supreme Court in Union Paper Bag Shield v. Murphy, equivalents is not the prisoner of a formula, and cannot be considered in a vacuum.[7] Equivalency must be determined in the context of the patent, the prior art and the particular circumstances of the case.[8] Thus, the stage for file wrapper or prosecution history estoppel had been set. Two years later in Leggett v. Avery, the Court held that disclaimed subject matter could not be recaptured.[9] Similarly, in Sargent v. Hall Safe and Lock Co., the Supreme Court reasoned that claim limitations added after rejections by the Patent Office examiner are in the nature of disclaimers with respect to the rejected subject matter.[10]
Fifty years passed before the Supreme Court next considered the application of estoppel to the equivalency analysis. In Keystone Driller Co. v. Northwest Engineering Corp.,[11] the Supreme Court explained that where broad claims are denied and narrower claims substituted, the patentee is estopped from reading the granted claim as the equivalent of those which were rejected.[12] Only 5 years later, this concept of prosecution history estoppel was reaffirmed by the Supreme Court in Schriber-Schroth Co. v. Cleveland Trust Co.,[13] wherein the Court explained that the doctrine of equivalents cannot be relied upon to give an allowed claim a scope which it might have had without the amendment, since the cancellation of a claim amounts to a disclaimer of the cancelled subject matter.[14] Both the amended claim and the cancelled claim must be read in light of the specification.[15]
In 1942, the Supreme Court explained in Exhibit Supply Co. v. Ace Patents Corp.[16] that where a claim is allowed with a restrictive amendment, the patentee may not rely upon the doctrine of equivalents to recapture claims which the patentee surrendered by amendment.[17] By making a restrictive amendment, the patentee has recognized and emphasized the difference between the original and amended claim, and has abandoned all that is embraced in that difference.[18] In other words, the amendment operates as a disclaimer of that difference.[19] What the patentee disclaimed cannot be regained by recourse to the doctrine of equivalents.[20] The doctrine secures to the inventor the full benefits of the allowed claims, beyond that which is disclaimed.[21]
The most commonly cited case in support of the doctrine of equivalents is the Supreme Court's 1950 decision in Graver Tank & Manufacturing Co. v. Linde Air Products Co.[22] In Graver Tank, the Supreme Court again acknowledged a patent would be useless if a party is allowed to imitate a patented invention, though not copying every literal detail.[23] The Court recognized that such a limitation would encourage the unscrupulous copyist to make unimportant and insubstantial changes and substitutions to the patented invention, without adding anything, and be outside the reach of the law.[24] As the Supreme Court stated, "Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism and would be subordinating substance to form."[25] The Court also reiterated that equivalency must be determined in the context of the patent, the prior art, and the particular circumstances of the case.[26]
The Supreme Court said nothing further for 47 years following the Graver Tank decision. Then, in Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,[27] the Supreme Court considered the doctrine of equivalents in great detail. While reaffirming Graver Tank and the doctrine of equivalents, the Supreme Court went much further in Warner-Jenkinson. First, the Court confirmed that a product or process that does not literally infringe the express terms of the patent claim, may, nonetheless, be found to infringe if there is equivalence between the elements of the accused product or process and the claimed elements in the patented invention.[28] The Supreme Court clarified that equivalence must be applied to the individual claim elements, rather than to the invention or claim as a whole.[29]
Beyond the simple reaffirmation of the doctrine of equivalents, the Supreme Court explained that prosecution history estoppel is a legal limitation on the doctrine.[30] Where an amendment is made for a reason not related to avoiding the prior art, the change may introduce a new element without necessarily precluding infringement by equivalents of that element.[31] Thus, the Supreme Court appeared to premise prosecution history estoppel upon an amendment which is needed to avoid the prior art. However, the Court then expanded estoppel to narrowing amendments made for reasons of patentability, rather than amendments made to avoid the prior art. More particularly, the Court declared that absent an explanation by the patent applicant, an amendment which adds a limiting element is presumed to be made for a reason related to patentability such that prosecution history bars application of the doctrine of equivalents as to that limiting element.[32] This presumption is broader than an amendment made to avoid the prior art, and would include amendments for purposes of overcoming § 112 rejections. Thus, while Warner-Jenkinson clarified that the doctrine of equivalents should be applied as an objective inquiry on an element-by-element basis, and that prosecution history estoppel is a defense to infringement,[33] Warner-Jenkinson did not make it clear whether estoppel applies only where the amendment was made to avoid the prior art or also to amendments made for other patentability reasons. Furthermore, Warner-Jenkinson apparently changed the focus of prosecution history estoppel application to the doctrine of equivalents from the subject matter which was disclaimed to subject matter added by amendment.
The 2002 Supreme Court Festo[34] decision perhaps clarified some of the ambiguities of Warner-Jenkinson. The Supreme Court acknowledged that the patent laws are premised upon the Constitution's goal of promoting the progress of science and the useful arts by rewarding innovation with a temporary monopoly,[35] but warned that the boundaries of these patent property rights should be clear.[36] "A patent holder should know what he owns, and the public should know what he does not."[37] However, as the Supreme Court recognized, the nature
of language unfortunately makes it impossible to capture the essence of an invention in a patent application.[38] Therefore, the scope of a patent is not limited to its literal terms, but instead, embraces all equivalents to the patent claims.[39] The doctrine of equivalents, while creating uncertainties as to the scope of the invention, is the price of ensuring appropriate incentives for innovation.[40]
Citing Schriber, the Court stated that estoppel is a rule of claim construction which interprets the claims by reference to claims that have been cancelled or rejected.[41] Citing Exhibit Supply, the Court re-emphasized that with an amendment, the patentee recognizes and emphasizes the difference between original and amended claims, with the difference being disclaimed.[42] Thus, the patentee cannot recapture the surrendered subject matter.
Despite the limitations of language in capturing the essence of invention,[43] prosecution history estoppel establishes that the inventor knew the words for both the broader and narrower claim, and chose the latter.[44] Therefore, estoppel arises by any amendment which narrows the patent scope,[45] including when a claim is narrowed to comply with § 112.[46]
The Court then declared that estoppel does not completely bar the inventor from asserting infringement against any equivalents to the narrowed element, so that some equivalents may still infringe.[47] The Court reasoned that prosecution history estoppel requires an examination of the subject matter surrendered by the narrowing amendment.[48] The Court further reasoned that a narrowing amendment may demonstrate what the claim is not, but still fails to capture precisely what the claim is.[49] Therefore, the Court concluded that there is no more reason for holding the patentee to the literal terms of an amended claim than there is for abolishing the doctrine of equivalents all together.[50] Thus, contrary to Warner-Jenkinson, the Festo Court appeared to return to the rationale of the Keystone, Schriber, and Exhibit Supply trilogy in that prosecution history estoppel applies to the surrendered subject matter, rather than to the element added or limited by amendment.
However, the Festo Court then quoted Warner-Jenkinson for the proposition that if the patentee is unable to explain why the narrowing amendment was not for the purpose of patentability, then estoppel applies to bar the application of the doctrine of equivalents as to the amended element.[51] The Court then declared that the patentee must bear the burden of showing that the amendment does not surrender the particular equivalent in question, since the decision to narrow the claim through amendment is presumed to be a general disclaimer of the territory between the original claim and the amended claim.[52]
Without overruling Warner-Jenkinson, the Festo Court further reasoned that the territory surrendered is not an equivalent of the territory claimed.[53] The Court concluded that the issue for estoppel is what territory was surrendered.[54] Estoppel does not affect a complete bar of the doctrine of equivalents, to the extent the narrowing amendment did not surrender the particular equivalence at issue.[55]
So which is it: estoppel precludes equivalents for the amended element or for the surrendered subject matter? It is unclear whether the Court appreciated that there is a difference.
The Court then explained that the presumption may be rebutted by showing that "at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent."[56] Since people skilled in the art normally do not draft patent application claims, perhaps this is an easy burden of proof. Alternatively, does anyone expect a patent attorney to testify that he/she was not smart enough to draft a claim encompassing the equivalent? This standard is simply too subjective. More importantly, the rebuttal inherently involves hindsight, in that any testimony must focus on claim drafting at the time of the amendment, even though the accused equivalent arises at a later time, perhaps years later. In other words, how does one avoid the strong temptation to conclude after seeing the accused equivalent, that a claim could have been drafted to cover it? Since hindsight is improper in analyzing a patent's validity under obviousness,[57] hindsight should also be improper in evaluating estoppel for infringement purposes.
III. THE
FEDERAL CIRCUIT'S TREATMENT OF THE DOCTRINE OF EQUIVALENTS
The Federal Circuit, which was created in 1982 so as to clarify and
unify the patent law, has issued many decisions regarding the doctrine of
equivalents. Unfortunately, the
cumulative effect of these decisions does not clarify or unify the doctrine.
In Diversitech Corp. v. Century Steps, Inc., the Court stated that an
originally dependent claim cannot be interpreted under the doctrine of
equivalents to cover subject matter which was rejected and cancelled in an
independent claim.[58] In other words, the equivalent of a claim
element cannot include matter which was cancelled. However, the court also stated that when an accused device is
covered by a rejected and cancelled claim, the cancelled claim scope cannot
be recovered in order to encompass the accused device through the doctrine of
equivalents.[59] Thus, the Court has focused the infringement
analysis on the cancelled claim, rather than the issued claim. It is certainly conceivable that an accused
device may be covered by independent claim 1 of the application, and dependent
claim 2. For example, the dependent
claim 2 provides for a device comprising A, B, C and D. The accused device has elements A, B, C and
D'. The cancelled independent claim 1
required elements A, B, and C. The
issue is whether D' is the equivalent of D.
Certainly the accused device A, B, C, D' is covered by the cancelled claim 1, since each of element A, B
and C are present in the accused device.
However, this coverage does not answer whether D and D' are
equivalent. Cancellation of claim 1
does not mean that claim 2 cannot be infringed if D and D' are equivalent,
contrary to the Court's broad statement in Diversitech.
In Insta-Foam Prods., Inc. v. Foam Sys., Inc., the Court explained that whenever prosecution history estoppel is invoked as a limitation to infringement under the doctrine of equivalents, a close examination must be made as to the subject matter surrendered, as well as the reason for the surrender. [60] The Court then concluded that when an allowed claim contains the same limitation as an abandoned claim, the patentee did not disclaim anything relating to such limitation.[61] But what happens under the above example wherein claim 1 has elements A, B and C, claim 2 depends from claim 1 and adds element D, then claim 1 is rejected and cancelled, and claim 2 is rewritten in independent form for allowance? Claim 2 includes all the elements of cancelled claim 1. Under Insta-Foam, nothing is surrendered, so the doctrine of equivalents seems to apply to all elements of claim 2, even if cancellation of claim 1 narrowed the scope of the patent.
The Federal Circuit has made clear that prosecution history estoppel arises when an applicant affirmatively relinquishes subject matter either through amendment, argument, or cancellation of a claim during prosecution of a patent application.[62] While cancellation of a claim alone does not create estoppel, an applicant's failure to re-file the cancelled claim does conclusively establish estoppel.[63] In the instance of a dependent claim rewritten in independent form, the estoppel may arise even though such claim was not amended during prosecution, since the broader independent claim was cancelled.[64] In other words, it is the surrender of subject matter which creates an estoppel to preclude application of the doctrine of equivalents so as to cover the surrendered subject matter.
The Federal Circuit has acknowledged that merely rewriting a dependent claim in independent form does not change the scope of the original dependent claim.[65] But it does change the scope of the patent if the independent claim is cancelled.
As explained in Glaxo Group, Ltd. v. Rambaxy Pharmaceuticals, Inc.,[66] a narrowing amendment made for any reason related to the statutory requirements for patentability gives rise to prosecution history estoppel with respect to the amended claim element.[67]
Then came the 2002 Festo Supreme Court decision. Following Festo, in Deering Precision Instruments, LLC v. Vector Distribution Sys., Inc.,[68] the Court seems to have reaffirmed the Supreme Court's older historical perspective, stating that a patentee's decision to narrow the claims is presumed to be a general disclaimer of the territory between the original claim and the amended claim.[69] In other words, estoppel arises when an amendment is made to secure the patent and the amendment narrows the patent's scope.[70] The Federal Circuit also concluded that the presumption applies to all claims containing the narrower limitations, regardless of whether the claim was amended during prosecution, since to hold otherwise would be to exalt form or substance.[71]
The Federal Circuit recently explained in Rambaxy Pharmaceuticals, Inc. v. Apotex, Inc., that the focus for estoppel is on whether the amendment surrendered subject matter that was originally claimed for reasons related to patentability.[72] In Rambaxy, the patentee rewrote dependent claims into independent form. The Court concluded that in doing so, the patentee is presumed to have surrendered the equivalents that may have been encompassed by the original independent claim.[73] This is different than the Glaxo preclusion of equivalents to the amended claim element.
The Federal Circuit's most recent decision in the Festo series of opinions (Festo IX, en banc) fails to clarify the doctrine of equivalents and prosecution history estoppel.[74] Festo IX sets forth a series of four questions for the estoppel analysis. The first question is "whether an amendment filed in the Patent and Trademark Office ("PTO") has narrowed the literal scope of a claim."[75] The Court does not clarify which claim is considered for this first question. Is it a cancelled claim, an amended claim, a new claim, or a combination of these? For example, while a dependent claim rewritten in independent form has not itself been narrowed[76], rewriting a dependent claim in independent form is a narrowing amendment when broader claims are cancelled.[77] Therefore, whether the amendment is narrowing appears to relate to the scope of the patent, rather than the scope of the amended claim. However, the Festo IX decision does not make this clear.
The second question, as framed by Festo IX, is whether the reason for the amendment was "a substantial one relating to patentability."[78] Unfortunately, "substantial" is not defined. Is there such a thing as an "insubstantial" reason relating to patentability?
The third question in the prosecution history estoppel analysis is what scope of subject matter was surrendered by the narrowing amendment.[79] There is a rebuttable presumption that the patentee surrendered all territory between the original claim limitation and the amended claim limitation.[80]
The last question is whether the patentee rebutted this surrender presumption, and if not then prosecution history estoppel bars the doctrine of equivalents "for the accused element".[81] However, it does not follow that the surrender of subject matter should preclude infringement by an equivalent to the retained subject matter of the amended claim element. Can't there still be an equivalent to the amended claim limitation that is outside the surrendered original claim limitation? Since the prosecution history estoppel analysis focuses, in part, on the subject matter surrendered, why is the doctrine of equivalents barred for the subject matter retained?
IV. ESTOPPEL AND EQUIVALENTS ARE MATTERS OF CHANCE
In
view of the Supreme Court and Federal Circuit decisions, it is clear that the
application of prosecution history estoppel, and thus the availability of the
doctrine of equivalents, is based upon the luck, or lack thereof, of the
examiner finding invalidating prior art.
If the examiner fails to find prior art on which to reject the claims,
then no narrowing amendment will be
necessary, prosecution history estoppel will not apply, and the doctrine of
equivalents would be available against accused infringers. Even before the application is filed, if a
patentability search discovers a prior art patent which the claim drafter can
distinguish in the original claims, then estoppel can be avoided and the
doctrine of equivalents survives.
However, such patentability searches depend on both the skill and the
luck of the searcher, as well as the scope of the search.
Application of estoppel and the doctrine of equivalents thus depends on the fortuitousness of the examiner or another searcher of finding the best prior art. It makes no sense that the effect of estoppel and the doctrine of equivalents on an issued patent claim depends entirely upon the process for reaching the final claim, rather than the substance of the claim. If an original claim issues without amendment, there will be no estoppel and a patentee can rely on equivalents. However, if the applicant started with a broad claim and amended the claim, estoppel will apply and equivalents will be precluded. If the issued original claim and the issued amended claim are identical, why should they have different scopes of protection? This is form over substance, which the Federal Circuit seeks to avoid.[82]
While the Supreme Court stated in Warner-Jenkinson that it is very different to start with a limiting phrase in an original claim than to add the phrase to overcome a prior art rejection[83], the Court offered no rationale for this allegedly different situation. The only difference is that someone may have been lucky enough to find the prior art patent, either in a preliminary patentability search or in the examiner's search. In effect, the original narrower claim already surrendered the broader subject matter before filing the application, rather than during prosecution by the amendment. In either instance, the resulting claim should be treated the same, whether drafted narrowly in the original claim or amended to the narrower scope.
In Festo IX, the concurring opinion acknowledged that the estoppel forfeiture presumption depends on "the luck of the examiner draw", since there are differences between examiners' aggressiveness in narrowing and defining claims.[84] Why should application of any legal principle depend on luck?
The solution may be that prosecution history estoppel should apply to all surrendered matter, whether surrendered at the time of filing the application or during prosecution, so that the doctrine of equivalents will apply to all of the issued claim elements, but not to the surrendered subject matter. This solution is in accordance with the basic premise of the doctrine of equivalents, that is, the limitation of language to completely capture the whole invention.[85]
V. UNANSWERED QUESTIONS ON THE DOCTRINE OF EQUIVALENTS
The
Supreme Court and Federal Circuit case law leaves many questions unanswered or
unclear. The following questions need
answers so patentees and their patent attorneys can draft
claims which will not be affected merely by the chance discovery of relevant
prior art or luck of the draw on the assigned examiner.
Question 1:
Why does procedure matter?
Consider the following original claims:
Claim 1. An apparatus comprising A, B and C.
Claim 2. The apparatus according to claim 1 wherein element C includes C'.
If claim 1 is rejected upon the prior art, and claim 2 is rewritten in independent form, then it appears that the difference between C and C' is surrendered so that there would be no doctrine of equivalency for that difference. However, if the applicant never filed claim 1 (A, B and C) and simply filed claim 2 (A, B, C and C') then there is no estoppel and the doctrine of equivalents applies, unless it is concluded that the applicant inherently surrendered the difference between C and C'. However, the courts have not gone this far even though it makes no sense to treat the identical claims 2 differently depending upon how they were filed.
Question 2: Is
there a difference between narrowing an element and adding
an element by amendment?
Consider the following original claims:
Claim 3. An apparatus comprising A, B and C.
Claim 4. The apparatus of claim 3 further comprising D.
If claim 3 is rejected on the prior art and claim 4 is rewritten in independent form, what has been surrendered? All equivalents to elements A, B and C? Should there be a difference in the application of estoppel in an amendment which narrows an element, such as claim 2 rewritten in independent form, as opposed to an amendment which adds an element, such as claim 4 rewritten in independent form. Even though element D was never surrendered, the Supreme Court and Federal Circuit analysis suggests that the patentee loses the equivalents to element D.[86]
Question
3: What happens if the original
application includes claims directed towards
different statutory subject matter:
Consider the following original claims:
Claim 5. An apparatus comprising A, B and C.
Claim 6. A method comprising the steps of using A, using B and using C.
During prosecution, the method claim is cancelled and the apparatus claim issues with no further amendment. Clearly, the patent has been narrowed, through the cancellation of the method claim. What was surrendered? Does estoppel apply or is the doctrine of equivalents available for the elements of the apparatus claim?
What if the method claim is filed in a separate related application, rather than in the same application as the apparatus claim? If the method claim is later cancelled or narrowed, what affect does that have on the apparatus claim, since the apparatus application was never narrowed?
Question
4: How do estoppel and
equivalents play in litigation when an independent
claim, but not a depending claim, is invalidated by
prior art?
The patent application claims are:
Claim 7. An apparatus comprising A, B and C.
Claim 8. The apparatus of claim 7 wherein C includes C'.
These claims are allowed without amendment. Later, during litigation, a prior art patent is found which invalidates claim 7, but not claim 8. Does this newly discovered art create an estoppel which precludes the doctrine of equivalents with respect to surviving claim 8? Arguably yes, because claim 8 here is identical to claim 2 above. Should the claims be treated differently merely because the prior art was not found during prosecution? To do so would surely treat form over substance, a result which the Federal Circuit scorns.[87]
Question
5: How do estoppel and ethics
correlate?
Are there ethical violations if a patent lawyer files broad claims without doing a search, and the broad claims must later be narrowed during prosecution because of prior art? There is no duty to do a pre-filing patentability search. However, the failure to do so increases the chances that an originally filed broad claim will be narrowed in response to a prior art rejection by the examiner. Then, the patentee loses the doctrine of equivalents due to estoppel. Does the patent attorney violate the ethical duty to represent the client zealously[88] by writing the original claims narrowly to avoid estoppel?
Question
6: Is there ever an amendment which is not
made for a reason unrelated to
patentability?
It would be very rare for
a patent applicant to make a gratuitous amendment not required to overcome a
rejection or objection to the claims, or some known prior art. Therefore, all amendments would appear to be
made for reasons of patentability.
However, not all amendments are narrowing so as to invoke prosecution
history estoppel. For example, an
amendment to overcome a § 112 rejection by providing proper antecedent support
in an independent claim for terminology in a dependent claim arguably does not
narrow the independent claim.
VI. CONCLUSION
The current status and application of prosecution history estoppel and the doctrine of equivalents depends on the fortuitousness of the original claim drafting and the discovery of prior art. This results, at times, in a system which places form over substance. The application of the doctrine of equivalents should not depend on what happen procedurally during prosecution of an application, but rather should apply to all claim elements unless the subject matter of the equivalent was disclaimed or surrendered. Such a standard would preserve the substance of the claim over the form of the claim, and would eliminate the affect of chance with regard to discovery of prior art. This would also return the doctrine of equivalents to its roots, as explained by the Supreme Court over 150 years ago, for protecting the full scope of an invention beyond any subject matter that has been intentionally disclaimed or surrendered.
http://www.intelproplaw.com/Articles/cgi/smartarchive.cgi?sortby=date&submit=Sort
* McKee, Voorhees & Sease, P.L.C., 801 Grand Avenue, Suite 3200, Des Moines, IA 50309-2721; www.ipmvs.com; hartung@ipmvs.com
[1] Winans v. Adam, 56 U.S. 330 (1853); see also O'Reilly v. Morse, 56 U.S. 62 (1853).
[2] Id., 56 U.S. at 342.
[3] Id., 56 U.S. at 342-43.
[4] Id., 56 U.S. at 343 (emphasis added).
[5] 61 U.S. 402, 405 (1857).
[6] Id.
[7] 97 U.S. 120, 125, (1877).
[8] Id.
[9] 101 U.S. 256, 258 (1879); see also Sutter v. Robinson, 119 U.S. 530, 7 S. Ct. 376 (1886). (Claims can not cover subject matter expressly disclaimed as a condition of obtaining the patent.)
[10] 114 U.S. 63, 86, 5 S.Ct. 1021, 1033 (1985).
[11] 294, U.S. 42, 55 S. Ct. 62 (1935).
[12] Id., 294 U.S. at 48, 55 S. Ct. at 265.
[13]311 U.S. 221, 61 S. Ct. 235 (1940).
[14] Id., 311 U.S. at 221, 61 S. Ct. at 240.
[15] Id., 311 U.S. at 222, 61 S. Ct. at 240.
[16] 315 U.S. 126, 62 S. Ct. 513.
[17] Id., 315 U.S. at 136, 62 S. Ct. at 518.
[18] Id., 315 U.S. at 136, 62 S. Ct. at 518.
[19] Id., 315 U.S. at 137, 62 S. Ct. at 519.
[20] Id.
[21] Id.
[22] 339 U.S. 605, 70 S. Ct. 854 (1950).
[23] 339 U.S. at 607, 70 S. Ct. at 856.
[24] Id.
[25] Id.
[26] 339 U.S. at 609, 70 S. Ct. at 856.
[27] 520 U.S. 17, 117 S. Ct. 1040 (1997).
[28] 520 U.S. at 21, 117 S. Ct. at 1045.
[29] 520 U.S. at 29, 117 S. Ct. at 1049 (emphasis added).
[30] 520 U.S. at 30, 117 S. Ct. at 1049.
[31] 520 U.S. at 33, 117 S. Ct. at 1050-51.
[32] 520 U.S. at 33-34, 117 S. Ct. at 1051.
[33] 520 U.S. at 40, 117 S. Ct. at 1054.
[34] Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiko Co., 535 U.S. 722, 122 S. Ct. 1831 (2002).
[35] Const., Art. I., § 8, cl. 8.
[36] 535 U.S. at 730, 122 S. Ct. at 1837.
[37] 535 U.S. at 731, 122 S. Ct. at 1837.
[38] Id.
[39] Id.
[40] 535 U.S. at 732, 122 S. Ct. a 1837-38.
[41] 535 U.S. at 733, 122 S. Ct. at 1838.
[42] 535 U.S. at 734, 122 S. Ct. at 1838.
[43] 535 U.S. at 734, 122 S. Ct. at 1839.
[44] 535 U.S. at 734-35, 122 S. Ct. at 1839 (emphasis added).
[45] 535 U.S. at 736, 122 S. Ct. at 1839.
[46] 535 U.S. at 737, 122 S. Ct. at 1840.
[47] Id.
[48] Id.
[49] 535 U.S. at 738, 122 S. Ct. at 1841.
[50] Id. (emphasis added).
[51] 535 U.S. at 739-40, 122 S. Ct. at 1841-42.
[52] 535 U.S. at 740, 122 S. Ct. at 1842.
[53] 535 U.S. at 741, 122 S. Ct. at 1842.
[54] Id.
[55] Id.
[56] Id.
[57] Orthopedic Equipment Co. v. United States, 705 F.2d 1005, 1012 (Fed. Cir. 1983).
[58] Builders Concrete, Inc. v. Bremerton Concrete Products Co., 757 F.2d 255, 259-260 Fed. Cir. 1985
[59] Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1285 (Fed. Cir. 1986).
[60] 906 F.2d 698, 703 (Fed. Cir. 1990); See also Bayer Atkiengesellschaft v. Duphar Int'l. Research, 738 F.2d 1237, 1243, (Fed. Cir. 1984).
[61] Id.
[62] Haynes Int'l., Inc. v. Jessop Steel Co., 8 F.3d 1573, 1578 (Fed. Cir. 1993).
[63] Id.
[64] Id. at 1579.
[65] Bloom Eng'g Co. v. North American Mfg. Co., 129 F.3d 1247, 1250 (Fed. Cir. 1997).
[66] 262 F.3d 1333, 1338 (Fed. Cir. 2001).
[67] See also Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1358-59 (Fed. Cir. 2001).
[68] 347 F.3d 1314, 1325 (Fed. Cir. 2003).
[69] Citing Festo II, 535 U.S. at 740, 122 S. Ct. at 1831.
[70] Id. at 1325-26, citing Festo II, 535 U.S. at 736, 122 S. Ct. at 1831.
[71] Id. at 1326.
[72] 350 F.3d 1235, 1240 (Fed. Cir. 2003).
[73] Id. citing Festo and Warner-Jenkinson.
[74] Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003).
[75] Id. at 1366, citing Pioneer Magnetics, Inc. v. Microlinear Corp., 330 F.3d 1352, 1356 (Fed. Cir. 2003).
[76] Bloom, 129 F.3d at 1250.
[77] Haynes, 8 F.3d at 1578.
[78] 344 F.3d at 1366.
[79] Id. at 1359.
[80] Id.
[81] Id.
[82] See Deering, 347 F.3d at 1326.
[83] 520 U.S. at 31, 117 S. Ct. at 1049.
[84] Festo, 344 F.3d at 1375, J. Rader concurring. Judge Rader also acknowledges that these changes in the application of prosecution history estoppel and the doctrine of equivalents creates unpredictability. He notes that the Federal Circuit's jurisprudence has moved at a lightning pace, with patent law having numerous new rules affecting the scope of claims, the strategy of prosecution, and other aspects. He further explains that "Trial courts and practitioners have little time to assess the full impact of one rule before hit with another or an exception to the first. With exception added to exception, and presumptions rebutted by still newer presumptions, a practitioner can scarcely predict the scope of claims year in the future, when they are likely to be enforced, let alone the scope of claims drafted a few years ago, when amendments did not potentially forfeit claim scope. In other words, the pace of the creation of new rules is itself disrupting the fundamental principle of certainty in the scope of patent claims." However, Congress has not made any significant changes to the patent statutes which affect the scope of patent claims. The doctrine of equivalents is judge-made law. It may be the Federal Circuit's own work which has created the uncertainty noted by Judge Rader. If so, the Court is failing to satisfy the purpose for which it was created in 1982, that is, to promote "doctrinal stability" and to "reduce the widespread lack of uniformity and uncertainty of legal doctrine" in the patent law. See Federal Court's Improvement Act of 1982, Pub. L. No. 97-154, 96 Stat. 25.
[85] Festo, 535 U.S. at 731, 122 S.Ct. at 1837. But what if accused device is equivalent to both the claimed element and the surrendered subject matter?
[86] Warner-Jenkinson, 520 U.S. at 33-34, 117 S.Ct. at 1051 (prosecution history bars application of the doctrine of equivalents for the limiting element); Glaxo, 262 F.3d at 1338.
[87] Deering, 347 F.3d at 1326.
[88] 37 C.F.R. § 10.83 (2003).