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Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

United States Court of Appeals for the Federal Circuit

September 26, 2003, Decided

95-1066

Opinion

 [***1323]  [*1363]   LOURIE, Circuit Judge.

This case is back to this court on remand from the Supreme Court of the United States for adjudication as to whether prosecution history estoppel bars Festo from relying on the doctrine of equivalents in this patent infringement suit. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 152 L. Ed. 2d 944, 122 S. Ct. 1831 (2002) ("Festo VIII"). The sole issue specifically before us is whether Festo can rebut the presumption that the filing of narrowing amendments for the two patents in suit surrendered all subject matter between the original claim limitations and the amended claim limitations. Id. at 741. For the reasons set forth herein, we conclude that Festo cannot overcome that presumption by demonstrating that the rationale underlying the narrowing amendments bore no more than a tangential [***1324]  relation to the accused equivalents or by demonstrating that there was "some other reason" such that the patentee could not reasonably  [*1364]  have been expected to have described the accused equivalents. However, we remand to the district court to determine whether Festo can rebut the presumption of [**6]  surrender by establishing that the equivalents in question would have been unforeseeable to one of ordinary skill in the art at the time of the amendments.

BACKGROUND

Enough has been written about the facts and prior decisions in this case that we need not provide more than a brief summary here. This litigation began in 1988 when Festo filed suit against Shoketsu Kinzoku Kogyo Kabushiki Co. and SMC Pneumatics, Inc. (collectively, "SMC") for infringement of United States Patents 4,354,125 (the "Stoll patent") and B1 3,779,401 (the "Carroll patent"), which relate to magnetically coupled rodless cylinders. The United States District Court for the District of Massachusetts granted partial summary judgment that SMC's accused device infringed claims 5, 6, and 9 of the Carroll patent under the doctrine of equivalents, and a jury found that SMC's accused device infringed claim 1 of the Stoll patent under the doctrine of equivalents. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., No. 88-1814-PBS (D. Mass. Oct. 27, 1994) ("Festo I").

After initially affirming the district court's judgment, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 72 F.3d 857 (Fed. Cir. 1995) [**7]  ("Festo II"), vacated and remanded, 520 U.S. 1111 (1997) ("Festo III"), 2 we eventually took the case en banc to address certain issues relating to prosecution history estoppel and the doctrine of equivalents that "remained in the wake of" the Supreme Court's decision in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 137 L. Ed. 2d 146, 117 S. Ct. 1040 (1997). Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 563 (Fed. Cir. 2000) (en banc) ("Festo VI"). In our en banc decision, we held that: (1) a "substantial reason related to patentability" that may give rise to an estoppel is not limited to overcoming prior art under 35 U.S.C. § 102 or § 103, but encompasses other reasons relating to the statutory requirements for a patent, including compliance with 35 U.S.C. § 112, id. at 566; (2) a "voluntary" claim amendment -- i.e., one neither required by a patent examiner nor made in response to a rejection by an examiner for a stated reason -- may give rise to prosecution history estoppel, id. at 568; [**8]  (3) no range of equivalents is available for an amended claim limitation when prosecution history estoppel applies, id. at 569; and (4) "unexplained" amendments are not entitled to any range of equivalents, id. at 578 (citing Warner-Jenkinson, 520 U.S. at 33). Applying those principles to the facts of this case, we concluded that the limitations at issue in the Stoll and Carroll patents had been narrowed by amendments made during prosecution and reexamination, respectively, and that Festo had failed to establish reasons unrelated to patentability for those amendments. Id. at 587-91. We therefore held that no range of equivalents was available for the amended claim limitations and reversed the district court's judgment of infringement with respect to both patents. Id. at 588-91.

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344 F.3d 1359 *; 2003 U.S. App. LEXIS 19867 **; 68 U.S.P.Q.2D (BNA) 1321 ***

FESTO CORPORATION, Plaintiff-Appellee, v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., a/k/a SMC CORPORATION, and SMC PNEUMATICS, INC., Defendants-Appellants.

Subsequent History: Rehearing, en banc, denied by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 2003 U.S. App. LEXIS 24135 (Fed. Cir., Nov. 5, 2003)

US Supreme Court certiorari denied by Shoketsu Kinzoku Kogyo Kabushiki, Co. v. Festo Corp., 541 U.S. 988, 158 L. Ed. 2d 492, 124 S. Ct. 2018, 2004 U.S. LEXIS 2767 (2004)

US Supreme Court certiorari denied by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki, Co., 541 U.S. 988, 158 L. Ed. 2d 492, 124 S. Ct. 2019, 2004 U.S. LEXIS 2768 (2004)

Judgment entered by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 2005 U.S. Dist. LEXIS 11621 (D. Mass., June 10, 2005)

Prior History:  [**1]  On remand from the Supreme Court of the United States.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 152 L. Ed. 2d 944, 122 S. Ct. 1831, 2002 U.S. LEXIS 3818 (2002)

Disposition: Court found Plaintiff could not overcome presumption of surrender by showing narrowing amendmentsto the "magnetizable" and "sealing ring" limitations of patents were only "tangential" or made for "some other reason." However, case remanded to consider whether plaintiff could rebut presumption by demonstrating two accused equivalents would have been unforeseeable to person of ordinary skill at time of amendments.

CORE TERMS

patent, sealing, surrender, rings, patentee, narrowing, rebuttal, estoppel, doctrine of equivalents, tangential, magnets, unforeseeable, sleeve, foreseeability, magnetizable, prior art, criterion, piston, rebut a presumption, district court, original claim, aluminum, skilled, subject matter, en banc, invention, argues, tube, infringement, technology

Patent Law, Infringement Actions, Doctrine of Equivalents, Equivalence Limits, Prosecution History Estoppel, General Overview, US Patent & Trademark Office Proceedings, Specifications, Description Requirement, Evidence, Inferences & Presumptions, Presumptions, Rebuttal of Presumptions, Defenses, Inequitable Conduct, Burdens of Proof, Fact & Law Issues, Civil Procedure, Trials, Bench Trials, Anticipation & Novelty, Enablement Requirement, Governments, Courts, Judicial Precedent, Jurisdiction & Review, Subject Matter Jurisdiction, Appeals