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Patentee could not rebut presumption of estoppel; noninfringement finding affirmed

April 21, 2008
Post by Blog Staff

In a decision Friday, the Federal Circuit affirmed a district court decision holding that application of the doctrine of equivalents was barred as the Festo presumptions had not been rebutted. The court noted that the patentee did not show that the alleged equivalent was unforeseeable at the time of making the narrowing amendment (which was the cancellation of an independent claim and rewriting a dependent claim into independent form) to the claims or that the narrowing amendment bore no more than a tangential relation to the alleged equivalent, the Federal Circuit upheld the district court's finding of noninfringement.Perhaps most telling was the Federal Circuit's description of the doctrine of equivalents in general. As stated by the court: "The foreseeability principle thus relegates the doctrine of equivalents to its appropriate exceptional place in patent enforcement."Judge Newman dissented, reiterating her position that simply cancelling an independent claim and rewriting a dependent claim in independent form does not narrow the claim, and thus prosecution history estoppel should not even be implicated. Also, with regard to the facts here, she decries the majority's position that the accused equivalent was unforeseeable even though it was not developed until 10 years after the patent-in-suit issued and was independently patented. She also faults the majority for finding the amendment not tangentially related to the equivalent in question simply because it relates to the "added" limitation from the dependent claim.More concerning Honeywell Int'l, Inc. v. Hamilton Sundstrand Corp. after the jump.Honeywell owns two patents relating to technology to control airflow surge in auxiliary power units or "APUs" on aircraft. During prosecution of the '893 patent, to overcome a rejection under 35 U.S.C. § 121, the applicant separated the system claims from the method claims. The system claims issued as the '893 patent and the method claims issued into the '194 patent. The independent claims on appeal were claims 8 and 19 of the '893 patent and claim 4 of the '194 patent. The USPTO rejected the original independent claims as obvious in light of the prior art, but allowed the patent when dependent claims were rewritten into independent form.Hamilton Sundstrand manufactures the APS 3200, an APU device with a surge control system that compares a flow-related parameter called DELPQP to a set point based on air inlet temperature and adjusts the surge bleed valve in response. Honeywell filed suit on May 17, 1999 alleging that Sundstrand's APS 3200 infringed claims of three of its patents, including the '893 and '194 patents. On February 16, 2001, a jury found that Sundstrand infringed claims of the '893 and '194 patents under the doctrine of equivalents. The jury further found that Honeywell was entitled to $45,000,000 in price erosion damages and $1,578,065 in reasonable royalty damages. The district court denied Sundstrand's motions for judgment as a matter of law and a new trial. Both parties appealed.In the previous appeal, the Federal Circuit, sua sponte, ordered that the case would be resolved en banc, without further arguments from the parties. The court held that Honeywell's act of "rewriting [the] dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel." Thus, the court vacated the judgment of infringement and remanded the case for the "determination of whether Honeywell [could] rebut the presumption . . . ."On remand, the district court held a two-day bench trial to determine whether prosecution history estoppel barred Honeywell from asserting the doctrine of equivalents. The district court correctly stated that Honeywell could rebut the presumption of surrender by demonstrating that (1) "the alleged equivalent would have been unforeseeable at the time of the narrowing amendment," or (2) "the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question," or (3) "that there was 'some other reason' suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent."Honeywell conceded the "some other reason" criterion. Thus, the district court focused on tangentiality and foreseeability. With regard to foreseeability, the district court held that it was "quite intuitive" that the use of DELPQP and IGV position to detect surge was foreseeable. Turning to the tangential relation prong, the district court disagreed with Honeywell's assertion that the amendment to the claims was made to overcome prior art, and therefore held that Honeywell did not rebut the presumption with the tangential relation prong. Honeywell appealed.On appeal, the Federal Circuit noted that, as decided in the previous appeal, since Honeywell's three asserted independent claims were rewritten from dependent form and because the original independent claims were cancelled, there was a presumption of prosecution history estoppel. Nonetheless, the court noted that Honeywell could still rebut the presumption with a showing under the unforeseeability, tangential relationship, or "some other reason" criterion.In the foreseeability analysis, the court, citing its most recent Festo decision, noted that "[a]n equivalent is foreseeable if one skilled in the art would have know that the alternative existed in the field of art as defined by the original claim scope, even if the suitability of the alternative for the particular purposes defined by the amended claim scope were unknown." According to the court, foreseeability in this context ensures that the doctrine does not capture subject matter that the patent drafter could have foreseen during prosecution and included in the claims. Based on the record presented, the court held that while the timing of Sundstrand's product development is ambiguous with respect to the foreseeability criterion, much of the extrinsic evidence supported the district court's decision. Thus, the record supported the district court's finding that a person of ordinary skill in the art would have known of the use of IGV position to distinguish between high and low flow in order to resolve the double solution problem during 1982-83 and, thus, Honeywell could have foreseen and included the alleged equivalent in the claims when they were amended. As a result, Honeywell did not rebut the presumption of surrender with evidence of unforeseeability.With regard to the tangential relationship criterion, the court noted that the criterion for overcoming the Festo presumption is very narrow. This criterion focuses on the "patentee's objectively apparent reason for the narrowing amendment." To rebut the estoppel presumption with tangentiality, a patentee must "demonstrate that the rationale underlying the amendment bore no more than a tangential relation to the equivalent in question," or, in other words, that "the narrowing amendment was peripheral, or not relevant, to the alleged equivalent." Additionally, the reason for the narrowing amendment "should be discernible from the prosecution history record." The court noted that the record showed that the examiner simply instructed that the dependent claims would be allowed if rewritten into independent form. Further, when Honeywell rewrote the application dependent claims into independent form, it "effectively add[ed] the [IGV] limitation to the claimed invention." Thus, the record shows that Honeywell made the amendment to add the IGV limitation. Because the alleged equivalent focuses on the IGV limitation, the amendment bore a direct, not merely tangential, relation to the equivalent. In summary, the Federal Circuit held that Honeywell failed to rebut the presumption of surrender, and it was therefore barred by prosecution history estopped from asserting the doctrine of equivalents. The court therefore affirmed the judgment of the district court.In a spirited dissent, Judge Newman stated that the result of the majority's opinion was to apply a new presumption of surrender to all equivalents of the claim elements and limitations that originated in dependent claims that were never amended and that were not the subject of prosecution history estoppel. Thus, although the limitation at issue had not been the subject of amendment, argument, or any other form of restriction, the court held that all equivalents to the l


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