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IP Litigation

Prosecution history estoppel applied where an amendment, though perhaps not necessary to overcome prior art, was not tangential and the equivalent was foreseeable

November 7, 2013

IP Litigation

Prosecution history estoppel applied where an amendment, though perhaps not necessary to overcome prior art, was not tangential and the equivalent was foreseeable

November 7, 2013

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Fed Cir reverses judgment of infringement based on the doctrine of equivalents because prosecution history estoppel applies.  Fed Cir also reverses the willfulness, finding predicated on that judgment, vacates the enhanced damages and exceptional case based on the DoE finding, affirms lost profits award for literal infringement on a different accused product, and holds that the district court did not abuse its discretion in finding no laches.

Integrated Tech. Corp. v. Rudolph Tech., Inc., __F.3d__ (Fed. Cir. Nov. 4, 2013) (Rader, Clevenger, MOORE) (D. Az.; Silver) (2 of 5 stars)

Prosecution history estoppel:  The patent-in-suit related to a system for inspecting probe cards used to test chips on semiconductor wafers which required, among other things, contact between the viewing window of a camera and a probe at two different points in time.  Some of the defendant’s products obtain an image by making contact at one time point but not a second time point.  The Fed Cir held that prosecution history estoppel precluded the patentee from establishing infringement of these products by equivalents, determining (1) that there was a narrowing amendment, (2) the rationale for the amendment was not “tangential” to the equivalent in question, and (3) the equivalent was foreseeable at the time of the amendment.  First, the Fed Cir found that, although the original claims required contact between the window and probe, the applicant had narrowed them by adding a limitation in response to rejections for indefiniteness and anticipation that “there must be two different forces that drive the probe tip in contact with the viewing window in two separate states.”  Slip op. at 7.  Second, the Fed Cir found the amendment was not tangential because the patentee’s “representations convey to the public that it was relying on physical contact to overcome the prior art,” id. at 9, even though it “may be that [the patentee] did not need to surrender a lack of physical contact between the probe tip and window in either state to overcome” the prior art.  Id. at 8.  It was “irrelevant” whether the patentee’s subsequent explanation for the amendment was “plausible” because the patentee bore the burden to establish it was tangential.  Id. at 9.  Third, the Fed Cir found the equivalent was foreseeable because it would have literally infringed the original claim before the amendment, id., while also remarking that “the record does not demonstrate that the equivalent is the innovative aspect” of the patented products.  Id. at 9-10.

Lost Profits:  Some of the defendant’s earlier products did involve physical contact between the window and probe at both time points and thus literally infringed, resulting in a lost profits award.  The Fed Cir refused to vacate this award despite the fact that the jury could have based it on the erroneous premise that the remaining products infringed by equivalents (and were thus not non-infringing alternatives) because the patentee “proffered a two-supplier theory of lost profits that was independent of the existence of noninfringing alternatives,” which the jury could have relied upon.

Other issues: The Fed Cir vacated the finding of exceptional case and the related award of attorneys’ fees because “the court’s analysis depended in part on the finding of willfulness.”  Id. at 12.  The court also affirmed the finding of no laches because the defendant did not show any prejudicial unreasonable delay in filing suit.

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Blog Authors

Joanna M. Fuller | Associate

Ms. Fuller represents pharmaceutical and high tech clients in patent litigation nationwide. Her cases have encompassed a wide range of technology, including pharmaceuticals, video coding, backup and recovery software, GPS technology, medical software, network security software,...

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