Haynes Intern., Inc. v. Jessop Steel Co.

• Decision Date: 08 February 1994
• Docket Number: No. 91-1410,91-1410
• Citation: 29 U.S.P.Q.2d 1958,15 F.3d 1076
• Parties: HAYNES INTERNATIONAL, INC., Plaintiff-Appellant, v. JESSOP STEEL COMPANY, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1076

15 F.3d 1076

29 U.S.P.Q.2d 1958

HAYNES INTERNATIONAL, INC., Plaintiff-Appellant, v. JESSOP STEEL COMPANY, Defendant-Appellee.

No. 91-1410.

United States Court of Appeals Federal Circuit.

Feb. 8, 1994.

Appealed from: U.S. District Court for the Western District of Pennsylvania; Cohill, Judge.

Victor M. Wigman, Wigman, Cohen, Leitner and Myers, P.C., of Arlington, Virginia and Lynn J. Alstadt, Buchanan Ingersoll, P.C., of Pittsburgh, Pennsylvania, were on the Appellant's Petition for Rehearing and Suggestion for Rehearing In Banc.

William H. Webb and Kent E. Baldauf, Webb, Burden, Ziesenheim & Webb, P.C., of Pittsburgh, Pennsylvania, were on the brief for Appellee on Appellant's Petition for Rehearing and Suggestion for Rehearing In Banc.

Before RICH, NEWMAN, and PLAGER, Circuit Judges.

PLAGER, Circuit Judge.

Prior Report: 8 F.3d 1573.

ORDER

This case is now before us on appellant's petition for rehearing and suggestion for rehearing in banc, filed Nov. 15, 1993 and appellee's brief in response thereto, filed Dec. 2, 1993, which have now been considered.

In order to clarify that the estoppel in this case arose from pre-issuance activities, and to emphasize the unique circumstances present in this case, we grant the petition for rehearing for the limited purpose of making the following language changes:

Page 1577, col. 2 line 33, delete "or reissue".

Page 1578, col. 1 line 19, delete "or reissue".

Page 1578, col. 2 line 8, delete "or reissue";

line 26, change "It is only" to--However,--;

line 29, change "them can it" to--them, it can--; and

line 30, after "established." insert

--A different case would be presented had the cancellation of original claims 1 and 4 occurred while prosecution was on-going, i.e., while Cabot had the opportunity in this proceeding to continue the prosecution of those claims. Had that been the case, Cabot's purpose in cancelling the claims could be divined from that act alone, and there would be no need to consider Cabot's activities or the lack thereof regarding future prosecution of the rejected claims. But see Square Liner 360?, Inc. v. Chisum, 691 F.2d 362, 371-72, 216 USPQ 666, 672-73 (8th Cir.1982) (Miller, J., sitting by designation) (holding that, even in this instance, the applicant's filing of a continuation-in-part application containing claims directed to the cancelled subject matter precluded the finding of an estoppel).--.

In all other respects, the petition is denied.

PAULINE NEWMAN, Circuit Judge, concurring in part, dissenting in part.

I of course concur in withdrawal of the court's requirement that the patentee must have sought a reissue patent in order to invoke the doctrine of equivalents. The requirement that a...