Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

• Citation: 234 F.3d 558,56 USPQ2d 1865
• Parties: (Fed. Cir. 2000) FESTO CORPORATION, Plaintiff-Appellee, v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., a/k/a SMC CORPORATION, and SMC PNEUMATICS, INC., Defendants-Appellants. 95-1066 DECIDED:
• Decision Date: 29 November 2000
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

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234 F.3d 558 (Fed. Cir. 2000) FESTO CORPORATION, Plaintiff-Appellee,
v.
SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., a/k/a SMC CORPORATION, and SMC PNEUMATICS, INC., Defendants-Appellants. 95-1066 United States Court of Appeals for the Federal Circuit DECIDED: November 29, 2000

On remand from the Supreme Court of the United States

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Copyrighted Material Omitted

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Copyrighted Material Omitted

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

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

J Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, for amicus curiae American

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Intellectual Property Law Association. With him on the brief was Louis T. Pirkey, President, of Arlington, Virginia. Of counsel on the brief was Joseph R. Re, Knobbe, Martens, Olson & Bear, L.L.P., of Newport Beach, California.

Frederick A. Lorig, Bright & Lorig, of Los Angeles, California, for amicus curiae Litton Systems, Inc. Of counsel on the brief were John G. Roberts, Jr. and Catherine E. Stetson, Hogan & Hartson L.L.P., of Washington, DC. Also of counsel on the brief were Rory J. Radding, Pennie & Edmonds L.L.P., of New York, New York; andStanton T. Lawrence, III and Carl P. Bretscher, Pennie & Edmonds L.L.P., of Washington, DC.

William P. Atkins, Pillsbury, Madison & Sutro LLP, of Washington, DC, for amicus curiae, The Patent, Trademark & Copyright Section of The Bar Association of The District of Columbia. With him on the brief wereKendrew H. Colton, Michael A. Conley, Shamita D. Etienne-Cummings and Barbara M. Flaherty.

Roddy M. Bullock, of Cincinnati, Ohio, for amicus curiae The Procter & Gamble Company.

Morgan Chu, Irell & Manella LLP, of Los Angeles, California, for amicus curiae Hewlett-Packard Company. Of counsel on the brief were Perry M. Goldberg and Laura W. Brill.

Christopher A. Hughes, Morgan & Finnegan, L.L.P., of New York, New York, for amici curiae International Business Machines Corporation; Eastman Kodak Company; and Ford Motor Company. Also on the brief was Mark J. Abate. Of counsel on the brief were Frederick T. Boehm, Kevin M. Jordan, Pryor A. Garnett andMark F. Chadurjian, IBM Corporation, Armonk, New York. Also of counsel on the brief was J. Jeffrey Hawley, Eastman Kodak Company, Rochester, New York; and Roger L. May, Ford Motor Company, Dearborn, Michigan.

Jonathan M. Harris, Conley, Rose & Tayon, P.C., of Houston, Texas, for amicus curiae Houston Intellectual Property Law Association. Of counsel on the brief was James W. Repass, Fulbright & Jaworski, of Houston, Texas.

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

Opinion for the court filed by Circuit Judge SCHALL, in which Chief Judge MAYER andCircuit Judges PLAGER, LOURIE, CLEVENGER, BRYSON, GAJARSA, and DYK join; in which Circuit Judges MICHEL, RADER, and LINN join with respect to PARTS III-A, III-B, and III-D; and in which Circuit Judge MICHEL joins with respect to PART III-E.

Concurring opinion filed by Circuit Judge PLAGER.

Concurring opinion filed by Circuit Judge LOURIE.

Opinion concurring-in-part and dissenting-in-part with respect to PART III-C filed byCircuit Judge MICHEL, in which Circuit Judge RADER joins.

Opinion concurring-in-part and dissenting-in-part with respect to PART III-C filed byCircuit Judge RADER, in which Circuit Judges MICHEL and LINN join.

Opinion concurring-in-part and dissenting-in-part with respect to PART III-C filed byCircuit Judge LINN, in which Circuit Judge RADER joins.

Opinion concurring-in-part and dissenting-in-part with respect to PARTS III-A, III-B, III-C, and IV filed by Circuit Judge NEWMAN.

SCHALL, Circuit Judge.

This is an appeal from the judgment of the United States District Court for the District of Massachusetts that Shoketsu

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Kinzoku Kogyo Kabushiki Co., Ltd. (also known as SMC Corporation) and SMC Pneumatics, Inc. (collectively, "SMC") infringed U.S. Patent No. 4,354,125 (the "Stoll patent") and U.S. Patent No. B1 3,779,401 (the "Carroll patent"), both owned by Festo Corporation ("Festo"), under the doctrine of equivalents. We took the case en banc to resolve certain issues relating to 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 (1997). Specifically, we asked the parties to brief the following five questions for rehearing en banc:

1. For the purposes of determining whether an amendment to a claim creates prosecution history estoppel, is "a substantial reason related to patentability," Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33, 117 S. Ct. 1040, 137 L. Ed. 2d 146 (1997), limited to those amendments made to overcome prior art under § 102 and § 103, or does "patentability" mean any reason affecting the issuance of a patent?

2. Under Warner-Jenkinson, should a "voluntary" claim amendment--one not required by the examiner or made in response to a rejection by an examiner for a stated reason--create prosecution history estoppel?

3. If a claim amendment creates 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. When "no explanation [for a claim amendment] is established," Warner-Jenkinson, 520 U.S. at 33, 117 S. Ct. 1040, thus invoking the presumption of prosecution history estoppel underWarner-Jenkinson, what range of equivalents, if any, is available under the doctrine of equivalents for the claim element so amended?

5. Would a judgment of infringement in this case violateWarner-Jenkinson's requirement that the application of the doctrine of equivalents "is not allowed such broad play as to eliminate [an] element in its entirety," 520 U.S. at 29, 117 S. Ct. 1040. In other words, would such a judgment of infringement, post Warner-Jenkinson, violate the "all elements" rule?

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 187 F.3d 1381, 1381-82, 51 USPQ2d 1959, 1959-60 (Fed. Cir. 1999) ("Festo V").

We begin with a brief synopsis of our answers to the en banc questions and a summary of how those answers affect the disposition of this appeal. In response to En Banc Question 1, we hold that "a substantial reason related to patentability" is not limited to overcoming prior art, but includes other reasons related to the statutory requirements for a patent. Therefore, an amendment that narrows the scope of a claim 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.¹ In response to En Banc Question 2, we hold that "voluntary" claim amendments are treated the same as other claim amendments; therefore, any voluntary amendment that narrows the scope of a claim for a reason related to the statutory requirements for a patent will give rise

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to prosecution history estoppel with respect to the amended claim element. In response to En Banc Question 3, we hold that when a claim amendment creates prosecution history estoppel, no range of equivalents is available for the amended claim element. In response to En Banc Question 4, we hold that "unexplained" amendments are not entitled to any range of equivalents. We do not reach En Banc Question 5, for reasons which will become clear in our discussion of the specific case before us.

In view of our answers to the en banc questions, we reverse the judgment that claim 1 of the Stoll patent and claims 5, 6, and 9 of the Carroll patent were infringed under the doctrine of equivalents. The claim elements that were found to be infringed by equivalents were added during prosecution of the Stoll patent and during reexamination of the Carroll patent. The amendments that added those elements narrowed the scope of the claims. Festo has not established explanations unrelated to patentability for these amendments; accordingly, no range of equivalents is available for the amended claim elements. Because the parties agree that SMC does not produce a device that literally satisfies those claim elements, the judgment of infringement must be reversed.

Section I of this opinion provides a brief overview of the doctrine of equivalents and prosecution history estoppel. Section II discusses the Supreme Court's decision inWarner-Jenkinson. Section III sets forth our answers to the en banc questions. In Section IV, we decide the appeal before us by applying our answers to the en banc questions to the facts of the case.

DISCUSSION

I.The Doctrine of Equivalents and Prosecution History Estoppel

The doctrine of equivalents prevents an accused infringer from avoiding liability for infringement by changing only minor or insubstantial details of a claimed invention while retaining the invention's essential identity. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). The doctrine of equivalents is utilized "'[t]o temper unsparing logic and prevent an infringer from stealing the benefit of the invention.'" Id. (quoting Royal Typewriter Co. v. Remington Rand, Inc., 168 F.2d 691, 692, 77 USPQ 517, 518 (2d Cir. 1948) (Hand, J.)). In pursuing these goals, the doctrine attempts to strike a balance between ensuring that the patentee enjoys the full benefit of his patent and ensuring that the claims give "fair notice" of the patent's scope. London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538, 20 USPQ2d 1456, 1458-59 (Fed. Cir. 1991). This balance can be easily...