Festo v. Shoketsu Kinzoku Kogyo Kabushiki

• Decision Date: 26 September 2003
• Docket Number: No. 95-1066.,95-1066.
• Citation: 344 F.3d 1359
• Parties: FESTO CORPORATION, Plaintiff-Appellee, v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., a/k/a SMC Corporation, and SMC Pneumatics, Inc., Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

344 F.3d 1359

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

No. 95-1066.

United States Court of Appeals, Federal Circuit.

September 26, 2003.

Rehearing En Banc Denied November 5, 2003.

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Charles R. Hoffmann, Hoffmann & Baron LLP, of Syosset, New York, argued for plaintiff-appellee. With him on the brief were Glenn T. Henneberger, and Anthony E. Bennett.

Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Arlington, Virginia, argued for defendants-appellants. With him on the brief were Charles L. Gholz, and Robert T. Pous. Of counsel on the brief was James B. Lampert, Hale and Dorr, LLP, of Boston, Massachusetts.

Lynn E. Eccleston, Eccleston Law Firm, of Washington, DC, for amicus curiae Bar Association of the District of Columbia, Patent, Trademark & Copyright Section.

J. Richard Manning, President, Washington State Bar Association, of Seattle, Washington, for amicus curiae, Washington State Bar Association. With him on the brief were Jerry A. Riedinger and James P. Donohue.

Joshua R. Rich, McDonnell Boehnen Hulbert & Berghoff, of Chicago, Illinois, for amicus curiae, The Association of Patent Law Firms. With him on the brief were Paul S. Tully and S. Richard Carden.

Kelly L. Morron, Chadbourne & Parke LLP, of New York, New York, for amicus curiae, The Association of the Bar of the City of New York.

Claire Laporte, Foley Hoag LLP, of Boston, Massachusetts, for amicus curiae The Federal Circuit Bar Association. With her on the brief was Denise W. DeFranco. Of counsel on the brief was George E. Hutchinson, Executive Director, Federal Circuit Bar Association, of Washington, DC.

Nancy J. Linck, Sr. Vice President, General Counsel & Secretary, Guilford Pharmaceuticals Inc., of Baltimore, Maryland, for amicus curiae, Biotechnology Industry Organization.

Lawrence F. Scinto, Fitzpatrick, Cella, Harper & Scinto, of New York, New York, for amicus curiae, American Intellectual Property Law Association. With him on the brief was Michael P. Sandonato. Of counsel on the brief were Ronald E. Myrick, President, American Intellectual Property Law Association, of Arlington, Virginia; David G. Conlin P.C., Edwards & Angell, LLP, of Boston, Massachusetts; and Janice M. Mueller, John Marshall Law School, of Chicago, Illinois.

Maxim H. Waldbaum, Salans, of New York, New York, for amicus curiae, Fédération Internationale Des Conseils En Propriété Industrielle. Of counsel on the brief were R. Danny Huntington, Burns, Doane, Swecker & Mathis, L.L.P., of Alexandria, Virginia; John P. Sutton, of San Francisco, California; Raymond C. Stewart, Birch, Stewart, Kolasch & Birch, LLP, of Falls Church, Virginia; and Tipton Jennings IV, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC.

Mark S. Davies, Attorney, Civil Division, Department of Justice, of Washington, DC, argued for amicus curiae, the United States. With him on the brief were Vito J DiPietro, Anthony J. Steinmeyer, and John Fargo, Attorneys. Of counsel on the brief were James A. Toupin, General Counsel; John M. Whealan, Solicitor; Thomas W. Krause, Cynthia C. Lynch, and Linda Moncys Isacson, Associate Solicitors, United States Patent and Trademark Office, Office of the Solicitor, of Arlington, Virginia.

Nicholas J. Seay, Quarles & Brady LLP, of Madison, Wisconsin, for amicus curiae, The Wisconsin Alumni Research Foundation, et al. With him on the brief were Anthony A. Tomaselli, Kristin Graham Noel, and Josephine K. Benkers.

James P. Leeds, Eli Lilly and Company, of Indianapolis, Indiana, for amicus curiae, Eli Lilly and Company. With him on the brief was Robert A. Armitage.

Kenneth C. Bass III, Sterne, Kessler, Goldstein & Fox, P.L.L.C., of Washington, DC, for amicus curiae, Sterne, Kessler, Goldstein, & Fox, P.L.L.C. With him on the brief were David K. S. Cornwell and Linda E. Alcorn.

Richard F. Ziegler, Cleary, Gottlieb, Steen & Hamilton, of New York, New York, for amicus curiae, United Technologies Corporation, et al. With him on the brief was David H. Herrington.

Dan L. Bagatell, Brown & Bain, P.A., of Phoenix, Arizona, for amicus curiae, Intel Corporation.

Joshua D. Sarnoff, Glushko-Samuelson Intellectual Property Law Clinic, Washington College of Law, American University, of Washington, DC, for amicus curiae, Consumer Project on Technology.

Before MAYER, Chief Judge, NEWMAN and MICHEL, Circuit Judges, PLAGER, Senior Circuit Judge,^* LOURIE, CLEVENGER, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge LOURIE, in which Circuit Judge MICHEL, Senior Circuit Judge PLAGER, and Circuit Judges CLEVENGER, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, and PROST join. Concurring opinion filed by Circuit Judge RADER. Opinion concurring in part and dissenting in part filed by Circuit Judge PAULINE NEWMAN, in which Chief Judge MAYER joins.

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, 122 S.Ct. 1831, 152 L.Ed.2d 944 (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, 122 S.Ct. 1831. 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 relation to the accused equivalents or by demonstrating that there was "some other reason" such that the patentee could not reasonably 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 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) ("Festo II"), vacated and remanded, 520 U.S. 1111, 117 S.Ct. 1240, 137 L.Ed.2d 323 (1997) ("Festo III"),¹ 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, 117 S.Ct. 1040, 137 L.Ed.2d 146 (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; (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, 117 S.Ct. 1040). 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.

The Supreme Court then granted certiorari to review our en banc decision. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 533 U.S. 915, 121 S.Ct. 2519, 150 L.Ed.2d 692 (2001) ("Festo VII"). First, the Court agreed with our holding that "a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel." Festo VIII, 535 U.S. at 736, 122 S.Ct. 1831. Second, however, the Court disagreed with our adoption of a complete bar to the doctrine of equivalents when prosecution history estoppel arises. Id. at 737, 122 S.Ct. 1831. The Court instead established a presumption that a narrowing amendment made for a reason of patentability surrenders the entire territory between the original claim limitation...