Festo
Lawrence B. Ebert
Lunch and CLE
March 30, 2001
From the internet 12/2/00
• It would be good to collect kernals of
wisdom about drafting and prosecuting
patent applications in the post-Festo era
(sounds like a law review article).
Festo from three views
• Academic (Mueller)
• Academic/firm (Wegner/Foley & Lardner)
• Firm (Shumaker)
Festo Presto! The Incredible Disappearing
Doctrine of Equivalents
Professor Janice M. Mueller
Handing a windfall to imitators, Festo maps a devilishly straightforward template for
free-riding: by making any insubstantial change sufficient to avoid the literal boundary of
narrowed claims, patented innovation can be imitated and exploited with ease. In the
guise of handing marketplace competitors a bright-line framework that purports to
1
minimize uncertainty, the Federal Circuit has facilitated “fraud on a patent” and
suborned the very evil that the doctrine of equivalents was designed to prevent:
“plac[ing] the inventor at the mercy of verbalism and . . . subordinating substance to
form.
1
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950).
Mueller
• The mere fact of amendment, as long as it
narrowed the scope of a claim limitation for
any statutory reason, works an absolute bar
to a finding of equivalency as regards that
limitation. Coverage over subsequentlydeveloped but equivalent technology, not
even fathomed at the time of the patentee’s
filing, is consequently extinguished under
Festo
Narrower claims?
• New filings will surely present greater numbers of narrower claims,
and more thorough prior art searches will be required pre-filing in
order to better predict what claims will be allowable without
amendment. Applicants will be highly motivated to appeal rejections
rather than amend their claims, thus compounding an already immense
backlog at the PTO Board of Appeals. Although the resulting
prosecution costs in the form of extended attorney time and higher
PTO fees will impact all applicants, small-entity/start-up technology
firms and solo inventors who can least afford them will predictably be
the most prejudiced
Mueller
• Whether the rule of Festo works permanent
structural harm to the patent system or is
corrected on certiorari is now in the hands
of the Supreme Court.
Harold C. Wegner
DEATH SENTENCE TO
EQUIVALENTS?
• These new rules, which limit the application of the doctrine of
equivalents, promise to change the practice of patent law and will
affect the behavior of competitors for years to come. The new rules
increase:
• (1) the resources to be invested the application drafting process,
• (2) the need for careful and thoughtful prosecution practice, and
• (3) the importance of the Markman hearing in patent litigation.
THE FOUR HOLDINGS OF
FESTO
• (1) Prosecution history estoppel applies with any narrowing
amendment made to deal with any statutory ground, not just
amendments made in response to prior art rejections,
• (2) voluntary amendments, including preliminary amendments are
treated the same as amendments required by the examiner,
• (3) if prosecution history estoppel applies, the patentee is not entitled
to any scope of equivalents as to the amended element, and
• (4) if an amendment is made without explanation, no range of
equivalents is available.
Reason related to patentability
• For the purposes of determining whether an amendment gives rise to
prosecution history estoppel, a "substantial reason related to
patentability" is not limited to overcoming or avoiding prior art, but
instead includes any reason which relates to the statutory requirements
for a patent. Therefore, a narrowing amendment made for any
reason related to the statutory requirements for a patent will give rise
to prosecution history estoppel with respect to the amended claim
element.
Voluntary amendments
• Voluntary claim amendments are treated the same as other
amendments. Therefore, a voluntary amendment that narrows the
scope of a claim for a reason related to the statutory requirements for a
patent will give rise to prosecution history estoppel as to
the amended claim element.
Voluntary Arguments
• Arguments made voluntarily during prosecution may give rise to
prosecution history estoppel if they evidence a surrender of subject
matter. E.g., KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,
1359-60, 55 USPQ2d 1835, 1841-42 (Fed. Cir. 2000) (concluding that
"KCJ's statements [during prosecution] reflect a clear and
unmistakable surrender" of subject matter that cannot be reclaimed
through the doctrine of equivalents);
En banc 3
• "[W]hen a claim amendment creates
prosecution history estoppel, no range of
equivalents is available for the amended
claim element".
Harold C. Wegner says
• Clearly, the denial of any range of
equivalents contradicts generations of
Supreme Court case law that are
perhaps disregarded only because of their
vintage: The conflicts are pointed out by
Circuit Judge Michel (joined by Circuit
Judge Rader). It is doubtful, however, that
the Supreme Court would revisit Festo on
this issue.
Features that Remain Unamended
• A claimed Widget may have elements W1+W2+W3. If the
amendment is made that narrows W2 to W2', then by
simply making the amendment and an argument focusing
solely upon element W2', then there is estoppel to bar
any equivalency for any other W2, but there still remains
open the possibility for equivalency for the unamended
elements W1 and W3.
Past in terrorem effect
• The Court majority was trying to limit the in terrorem
effect of having a jury decided issues of equivalence. The
uncertainty created by giving the technically
unsophisticated jurors the ability to award multimillion
dollar damages gave patentees a powerful weapon.
Competitors, faced with the uncertainty of a jury
determining the scope of equivalents, simply would stay
out of markets in the face of a bullying patentee.
Markman and Festo
• The Festo decision increases the importance
of the Markman hearing. Markman hearings
have already become critically important
events in most patent suits.
• A court could interpret a critical claim
element, address ancillary prosecution
history estoppel issues, and resolve many
cases without need for trial.
Strategy
• Instead of filing "the" case and relying upon the doctrine of
equivalents, an evolutionary approach should be adopted. The
provisional application system provides a very convenient weapon for
the pioneer inventor: Every new development is made the subject of a
provisional application
• At the first anniversary of the first filing, that first filing together with
all the subsequent provisionals are cobbled together into a massive
filing under the Patent Cooperation Treaty (and the Paris
Convention) to provide the best scope of protection possible on a
global basis.
Evolution
• The evolutionary approach to patent filing offers an additional
advantage—each of the embodiments disclosed in the provisional
applications can be included in the PCT filing. This results in a
specification that broadly discloses the claimed invention and includes
several working embodiments. Such a specification is likely to provide
written description support for a broad range of claims of varying
scope. It will also help counteract Federal Circuit’s tendency to
construe claims narrowly when the specification discloses a single
working embodiment. See, e.g., Watts v. XL Sys., Inc. 2000 WL
1693057 (Fed. Cir. Nov. 14, 2000).
Action items
• (1) Before the application is filed, all of the available prior art must be
considered. Pre-filing prior art searches have also become more
advisable.
• (2) Applicants should make full use of the three independent claims
and the twenty total claims included with the filing fee. The goal is the
draft multiple sets of claims of varying scope. The goal is to file at
least one claim that is allowable as written.
• (3) If the original claims of the patent are allowed as filed, there will be
a freedom from prosecution history estoppel, unless there have been
arguments of criticality made relating to patentability
Statements
• Prior to Festo, the panel opinions of the Federal Circuit had generally
approved the application of prosecution history estoppel against
unamended claims based upon argumentation of criticality of a
particular feature. This viewpoint is strongly approved in the Festo
majority opinion. Therefore, arguments in the specification,
particularly the "Background of the Invention", must be very carefully
thought out.
• Information Disclosure Statements should also be very carefully drawn
so as to only paraphrase (or better yet quote from) what the prior art
reference states, without comparative statements. To do otherwise is to
again invite foreclosure of the doctrine of equivalents.
Amendments
•
•
•
•
•
(1) Change as few limitations as possible to address the Examiner’s rejections.
(2) Confine amendments to limitations where, for technical or commercial
reasons, there is no need for the doctrine of equivalents.
(3) Explain the reason for all amendments. In particular, if amendment is
intended to broaden the scope of a claim limitation, say so clearly.
(4) Carefully identify which claim limitations and claims are being discussed
in remarks concerning a particular amendment. See Johnson Worldwide
Assocs., Inc. v. Zebco Corp., 175 F.3d 985 (Fed. Cir. 1999).
(5) If the Examiner indicates that a dependent claim would be allowable and
is only objected to because it depends from a non-allowed independent claim,
rewrite the dependent claim in independent form. Do not add the claim
limitation to the dependent claim.
(6) If a limitation is broadly disclosed in the specification, consider rewriting
amended claim elements in means-plus-function form.
Shumaker Strategy
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Narrow Claims
Hierarchy of Independent Claims
Multiple Parallel Applications
Characterizing Remarks
Ensure Clarity
New Claim Sets
Know the Prior Art
Varied Terminology
Examiner Interviews
Declarations
Hierarchy of Independent Claims
• Independent claims may vary from broad to narrow, and may include a
generic claim
• The Examiner may allow some of the independent claims without the
need for amendment. This approach avoids the need to rewrite
dependent claims in independent form. Instead, they would be drafted
as independent claims from the beginning.
• Unknown impact of Festo when claims are canceled. In particular, if
the prosecutor gives up claim scope by canceling broader, independent
claims,
• Unclear whether an estoppel would be raised against the remaining
claims to the extent they merely define incremental limitations over the
canceled claims.
Multiple Parallel Applications
• If one application initially claims the invention very
broadly, for example, but requires amendments to
• obtain allowance, the theory is that the resulting estoppel
will not be visited upon the other applications. This
assumes that the applications are not legally linked to one
another by a claim of priority. If this approach works, the
expense of another filing may pay dividends in preserving
the availability of the doctrine equivalents.
• This strategy is an effort to “seal off” applications claiming
the invention narrowly from applications claiming the
invention more broadly.
Characterizing Remarks
• Some prosecutors are beginning to advocate a practice contrary to their
instincts—distinguish the claim limitations in the record
• Previously, prosecutors have been trained to say as little as possible
• Post-Festo, claims that speak for themselves can be a liability if
amended, triggering the absolute bar to the doctrine of equivalents.
• This counter-intuitive tactic would involve characterizing
claimlimitations to define differences over the prior art, without
actually amending the limitations to indicate those differences.
Question 4
•
When “no explanation [for a claim amendment] is established,” WarnerJenkinson, 520 U.S. at 33, 117 S.Ct. 1040, thus invoking the presumption of
prosecution history estoppel under Warner-Jenkinson, what range of
equivalents, if any, is available under the doctrine of equivalents for the claim
element so amended? [4] We answer Question 4 as follows: When no
explanation for a claim amendment is established, no range of equivalents is
available for the claim element so amended. This question is answered by
Warner-Jenkinson: Where no explanation is established, ... . prosecution
history estoppel would bar the application of the doctrine [of] equivalents as
to that element. Warner-Jenkinson, 520 U.S. at 33 (emphasis added). In
answering this question, we affirm what we stated in Sextant, 172 F.3d at 832,
49 USPQ2d at 1875: when “the Warner-Jenkinson presumption is applicable,
... the prosecution history estoppel arising therefrom is total and completely
`bars’ the application of the doctrine of equivalents as to the amended
limitation.”
Look in the file?
• Page 1890: As discussed above, under Warner-Jenkinson, Festo bears
the burden of establishing that the amendment was made for a reason
unrelated to patentability. Warner-Jenkinson, 520 U.S. at 40-41. It
has failed to do so. Festo admits that there is “[n]o specific mention of
the sealing rings” in the prosecution history record.
• In view of this prosecution history, Festo cannot establish that the
amendment that added the pair of sealing rings element was made for
a reason unrelated to patentability. Indeed, the prosecution history
indicates that the amendment was made for a reason related to
patentability.
In re Clement
• If an applicant amends a broad claim in an effort to
distinguish a reference and obtain allowance, but promptly
files a continuation application to continue to traverse the
prior art rejections, circumstances would suggest that the
applicant did not admit that broader claims were not
patentable--assuming that the applicant did not ultimately
abandon the continuation application because the examiner
refuses to withdraw the rejections. 131 F.3d 1464 (CAFC
1997)
Festo
Mary Ellen Feehery: strategy of narrow then broad
Carl Pierce: Recent Insituform decision
BuSpar (buspirone): Bristol Myers v. Mylan (D.D.C.),
conversion in the stomach
Lunch and CLE
March 30, 2001