JOHN W. SCHLICHER

PATENTS, PATENT LITIGATION, PATENT DISPUTE RESOLUTION AND

SETTLEMENT, LICENSING, ANTITRUST, LAW AND ECONOMICS

 

 

John W. Schlicher, “The Law, History, and Policy of Prosecution History Estoppel in Patent Actions in the United States Supreme Court – Implications for Festo,” 84 Journal of the Patent and Trademark Office Society 581 (Part I) and 692 (Part II) (2002)

 

Note: Sections I. to VIII were written before the Supreme Court’s decision. The final section IX was written after the Supreme Court’s decision.

 

Table of Contents (partial)

I.    Introduction

II.   The Patent Act Requirements for the Specification and Claims

III.  The Court of Appeals Decision in Festo

IV.  The Origin and History of Prosecution History Estoppel in the Supreme Court

A.       Claims Determine the Scope of Patent Rights – Merrill, Keystone and Others

B.        The Creation of the Prosecution History Estoppel in the 1880s - Leggett, Shepard

C.        A Claim Narrowed to Obtain the Patent Cannot Be Construed to Revive the Rejected Claim by Broad Construction - Hubbell

D.       The Approach that Developed after Hubbell

E.        A Claim Narrowed to Obtain a Patent May Not by Construction or Equivalents Have the Same Scope It Would Have Had Without the Amendment - Weber v. Freeman

F.        A Claim Limited to Overcome a Rejection Is Looked Upon as a Disclaimer, and an Estoppel to Claim the Benefit of the Rejected Claim or a Construction of the Amended Claim as to be Equivalent Thereto - Smith v. Magic City Kennel Club

G.        By Narrowing the Claims to Obtain a Patent, the Applicant Abandons All that Is Embraced by the Difference between the Original and Amended Claim—Exhibit Supply

H. A Claim Narrowed to Obtain a Patent Is Presumed to Have Been Made for a Reason Related to Patentability—Warner-Jenkinson v. Hilton Davis

 

A. V.   The Proper Scope of Patent Rights

B. A.   The Scope of a Patent, and the Purpose of Patent Law

C. B.   The Correct Scope and the Private Value of an Invention

D. C.   The Scope Determining Laws Given the Costs and Risk of Patents

E. Claims and the Correct Scope of a Patent

 

VI.      The Policy of Prosecution History Estoppel

VII.     Resolving the Festo Legal Issues

VIII.    The Actual Effects of Festo

IX.      The Supreme Court’s Decision in Festo

A.       When Prosecution History Estoppel Arises

1.        Amendments to Satisfy any Substantive Requirement for a Patent, including Section 112, May Create Estoppel

2.        Estoppel Arises Only From Narrowing Amendments

3.        Estoppel Arises Only From a Narrowing Amendment Made to Obtain a Patent after the Patent Office Has Found the Original Claim Unpatentable

B.        The Effect of Prosecution History Estoppel

1.        Estoppel Does Not Completely Bar Application of the Doctrine of Equivalents to the Amended Element or Limitation

2.        The Policy of Incentives to Invent Prevails Over the Policy of Certainty

3.        Estoppel Means that the Only Equivalent Products Possibly Surrendered during Prosecution Are Those Within the Original Claims and Outside the Narrowed Claims

4.        There Is a Presumption that Products Within the Original Claims and Outside the Narrowed Claims Do Not Infringe Under the Doctrine of Equivalents

5.        The Doctrine of Equivalents Is Designed to Provide a Broader Scope of Rights Where the Literal Scope of the Claims Reasonably Failed to Do So, and the Prosecution History Estoppel Ensures that the Doctrine is Applied Only Where the Underlying Policy Is Served

6.        The Presumption May Be Overcome

7.        The Doctrine of Equivalents, and Prosecution History Estoppel Are Part of Claim Construction