Brief Fact Summary. Festo Corporation (Plaintiff), which was the holder of two patents relating to magnetic rodless cylinders, sued Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (Kabushiki) (Defendant), a competitor, for infringement. The federal district court held for Plaintiff, and Defendant appealed. The court of appeals affirmed. On grant of writ of certiorari, the United States Supreme Court vacated and remanded. On remand, the court of appeals initially affirmed in part, vacated in part, and remanded, but on rehearing en banc reversed. The United States Supreme Court granted certiorari.
Synopsis of Rule of Law. Narrowing a claim to obtain a patent does not cause the patentee to surrender all equivalents to the amended claim element.
In that instance the prosecution history has established that the inventor turned his attention to the subject matter in question, knew the words for both the broader and narrower claim, and affirmatively chose the latter.View Full Point of Law
Does narrowing a claim to obtain a patent cause the patentee to surrender all equivalents to the amended claim element?
Held. (Kennedy, J.) No. Prosecution history estoppel may apply to any claim amendment made to satisfy the requirements of the Patent Act, not just to amendments made to avoid the prior art, but estoppel need not bar suit against every equivalent to the amended claim element. A patent holder’s temporary monopoly is a property right, and the scope of the patent is not limited to its literal terms but instead embraces all equivalents to the claims described. As in this case, whether the amendment of a patent claim in response to an examiner objection bars a subsequent infringement claim based on the doctrine of equivalents requires an examination of the nature of the subject matter surrendered by the narrowing amendment. In addition, prosecution history estoppel requires that claims of patent be interpreted in light of the proceedings in the patent office during the application process. The circuit court erred in holding that when estoppel applies, it bars any claim of equivalence for the element that was amended. To the contrary, (1) prosecution history estoppel may apply to any claim amendment made to satisfy the requirements of the Patent Act; (2) amendment is not an absolute bar to a claim of infringement under the doctrine of equivalents; and (3) the patentee is burdened with proving that amendment did not surrender the particular equivalent in question. Vacated and remanded.
Discussion. The Supreme Court noted that estoppel arises from any amendment that narrows a claim to comply with the Patent Act, not only from amendments made to avoid the prior art, as the district court had originally held.