Article March 31, 2022
Potential Ways for Avoiding the Presumption of Prosecution History Estoppel of an Allowable Dependent Claim Depending from a Rejected Independent Claim
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The presumption of prosecution history estoppel is difficult to overcome. This presumption typically arises when a claim is rejected over the prior art and is then amended (limited) to overcome the rejection. Set forth below are strategies to gain allowance of the desired claim while attempting to avoid the presumption. The authors are unaware of case law that directly support the viability of the strategies; however, the strategies avoid Supreme Court and Federal Circuit holdings that apply the presumption.
In this light, consider the simple hypothetical claim set:
- A vehicle with four wheels.
- The vehicle according to claim 1, further including a steering wheel.
Assume that the Examiner rejects claim 1 as anticipated or obvious but only objects to claim 2 as being dependent from rejected claim 1. In other words, the Examiner states that claim 2 would be allowable over the prior art if written in independent form.
Further assume that the goal is to gain allowance of claim 2 but avoid the presumption of prosecution history estoppel that could apply to the "steering wheel" limitation. Consider the following four responses, all of which should presumably result in the allowance of the desired claim:
|Option A||Option B|
|Option C||Option D|
II. Which Option May Avoid the Presumption of Prosecution History Estoppel?
A. Option A - Cancel Independent Claim and Rewrite Dependent Claim as a New Claim in Independent Form
The Federal Circuit has unequivocally held that the presumption of prosecution history estoppel applies here: "[W]e hold that the rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel." Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1134 (Fed. Cir. 2004) (emphasis added). In her dissent in Honeywell, Judge Newman criticized the holding because "the court achieves the far-reaching new rule that an element or limitation contained in a dependent claim, although never narrowed and never subject to any ground of rejection, has presumptively surrendered all equivalents." Id. at 1148 (Newman, J., dissenting). Nevertheless, the Federal Circuit strengthened its position in Felix v. Am. Honda Motor Co., Inc., 562 F.3d 1167, 1183 (Fed. Cir. 2009) ("We therefore hold that the presumption of prosecution history estoppel attaches when a patentee cancels an independent claim and rewrites a dependent claim in independent form for reasons related to patentability, even if the amendment alone does not succeed in placing the claim in condition for allowance."). Thus, Option A undoubtedly creates the presumption of prosecution history estoppel even if the Examiner would have allowed desired claim 3 if it had been originally presented in independent form.
B. Option B - Amend Original Claim and Cancel Dependent Claim
The presumption of prosecution history estoppel as to the steering wheel limitation also applies here. Mycogen Plant Sci., Inc. v. Monsanto Co., 252 F.3d 1306, 1320-21 (Fed. Cir. 2001), states that there is no legal difference between Option A and Option B:
We do not discern any legally significant difference between canceling a claim having a broad limitation and replacing it with a claim having a narrower limitation, and amending a claim to narrow a limitation. To do so would place form over substance and would undermine the rules governing prosecution history estoppel laid out in Festo by allowing patent applicants simply to cancel and replace claims for reasons of patentability rather than to amend them.
Although its express holding that "[w]hen a claim amendment (or in this case the cancellation of a claim with a broad limitation in favor of one with a narrower limitation) creates prosecution history estoppel, no range of equivalents is available for the amended claim limitation," id. at 1320, was vacated in light of the Supreme Court's Festo decision, Mycogen Plant Sci., Inc. v. Monsanto Co., 535 U.S. 1109, 1109 (2002), the dicta in the block quote was not questioned. Rather, a series of holdings and statements made by the Supreme Court and Federal Circuit seem to substantiate Mycogen's dicta. In Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 40-41 (1997), the Supreme Court held that "[w]here the patent holder is unable to establish [the amendment had a purpose unrelated to patentability], a court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply." Following Warner-Jenkinson, the Supreme Court held "that the patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740 (2002). The Federal Circuit has applied that presumption whether the limitation was "amended or [a] newly added limitation." Honeywell, 370 F.3d at 1144. As the steering wheel "narrowing amendment was the addition of a new claim limitation, . . . equivalents are presumptively not available with respect to that limitation." Biagro W. Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1305 (Fed. Cir. 2005). Thus, Option B also creates the presumption of prosecution history estoppel even if the Examiner would have allowed amended claim 1 if it had been originally presented in independent form.
C. Option C - Amend the Independent Claim and Add a New Claim
The presumption of prosecution history estoppel as to newly-added claim 3 arguably does not apply. Independent claim 1 has not been canceled; therefore, the holdings of Honeywell and Felix that control Option A are avoided. In fact, the holdings in Honeywell and Felix appear to carve out just this option; otherwise, there would have been no need to narrow the holdings to cancelation of the independent claim. Rather, the holdings could have broadly stated that rewriting a dependent claim in independent form for reasons related to patentability creates the presumption of prosecution history estoppel.
So although the presumption of prosecution history estoppel applies to the "expendable" amendment of claim 1 (as it did for the amendment in Option B), the case law does not necessarily dictate that the presumption should apply to newly-added claim 3. Claim 1 was allowed for its "expendable" limitations, not "a steering wheel" limitation. Claim 3 was not amended and never would have been rejected if originally included in the claim set. Arguably, it should not be subject to the Festo presumption. See Ericsson, Inc. v. Harris Corp., 352 F.3d 1369, 1375 (Fed. Cir. 2003) ("That limitation was never amended and therefore cannot be subject to the Festo presumption."); see also U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd., 505 F.3d 1371, 1380 (Fed. Cir. 2007) ("[T]here has been no narrowing amendment to the claim at issue, and Iwasaki has not asserted prosecution history estoppel in this case. Given these facts, there is no reason to presume that U.S. Philips has 'surrendered' anything."). Only the "expendable" amendment in sacrificial claim 1 should be subject to the presumption. Honeywell and Felix do not detract from the general principle that non-amended claims are not subject to the Festo presumption because original claim 1 was never canceled.
Durango Associates, Inc. v. Reflange, Inc., 843 F.2d 1349 (Fed. Cir. 1988) is instructional. In that case, the asserted claim, claim 3 (application claim 7) "was deemed allowable if rewritten in independent form" but depended from a rejected application claim 2, which also depended on rejected application claim 1. Id. at 1351. Claim 3 was rewritten in independent form, and the original rejected application claim 2 was later allowed after being amended to include a 2-step installation process. Id. Although claim 3 was rewritten in independent form, "the district court set out in detail the structure in Climax’s machines which it found to be the equivalent of the tapered threaded plug disclosed in the patent specification." Id. at 1357. The Federal Circuit did not find error in the district court's finding of equivalence and further concluded that the 2-step installation process amendment made to claim 2 had no effect on asserted claim 3. Id. at 1357-58. Although this case involved equivalence under 112, the Supreme Court found that applying 112 equivalents was in fact "an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 28 (1977).
It is possible that a court could view Option C as exalting form over substance and nevertheless apply the presumption. But, if that is the case, Option D, explained below, which also promotes form over substance, is problematic because there lacks a basis for applying the presumption to Option D.
D. Option D – Amend the Independent Claim and Amend the Dependent Claim
Like Option C, the presumption of prosecution history estoppel as to the "steering wheel" limitation arguably does not apply. Independent claim 1 has not been canceled; therefore, the holdings of Honeywell and Felix that control Option A are avoided. While Festo applies to the amended claim limitations of claims 1 and 2, as in Option B, the novel "steering wheel" limitation was not added or amended. For desired claim 2, estoppel prevents equivalents of "four wheels" (the amended language) but not equivalents of "steering wheel" (the non-amended language), thus preserving equivalents of the novel limitation.
Plus, even if the presumption applied, the amendment ("four wheels") to claim 2 was made purely for procedural reasons, i.e. to overcome a procedural objection, not for patentability reasons. "Four wheels" was not added for patentability reasons because the Applicant acknowledged that there were already vehicles with four wheels in existence by amending claim 1 with a sacrificial limitation. Thus, a very solid tangential argument exception exists for the litigator to overcome a presumption, should it unexpectedly apply.
E. Option E - Write All Original Claims in Independent Form
Option E is slightly different from the other options, which is why it was not presented in the Introduction. However, it also is a potential option for avoiding the presumption of prosecution history estoppel by anticipating the Examiner's objections and rejections presented in the hypothetical.
Instead of using the procedural convenience of drafting claims in dependent form, Option E writes all original claims in independent form, even if they could have been written in dependent form. In other words, the original hypothetical claim set would be adjusted as follows:
- A vehicle with four wheels.
- A vehicle with four wheels and a steering wheel.
Under the hypothetical scenario presented in the Introduction, the Examiner would reject claim 1 but allow claim 2. Allowance of the desired claim "[a] vehicle with four wheels and a steering wheel" just as with the other options would be achieved by the following response:
In this manner, if the Examiner rejects the broad independent claim 1 but not the narrower independent claim 2, no presumption would attach to claim 2 because it was never amended or rewritten in any fashion.
If budget is not a concern, all claims could be drafted in independent form at the outset, thus eliminating the need to rewrite objected-to, but not rejected, dependent claims. Alternatively, to avoid the extra costs of examining more than 3 independent claims, a series of three independent claims, each narrower than the previous claim could be written in the original application. If at least one independent claim is allowable, it will escape the presumption of prosecution history estoppel. Dependent claims and new independent claims can be added after canceling the rejected independent claims.
III. Why Is It Helpful To Avoid the Presumption of Prosecution History Estoppel?
Avoiding the presumption of prosecution history estoppel is critical because the presumption can only be rebutted by demonstrating that:
(1) "the alleged equivalent would have been unforeseeable at the time … the narrowing amendment" was made;
(2) "the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent" at issue; or
(3) "there was some other reason suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent."
Honeywell, 370 F.3d at 1140 (citing Festo, 535 U.S. at 740-41). Given that the applicant is unlikely to provide any reason for the amendment, it is unlikely there will be sufficient support in the prosecution history to rebut the presumption with any of options (1)-(3). Without any explanation, it is extremely difficult to overcome the presumption in litigation. Warner-Jenkinson, 520 U.S. at 33 ("Where no explanation is established, however, the court should presume that the patent applicant had a substantial reason related to patentability for including the limiting element added by amendment. In those circumstances, prosecution history estoppel would bar the application of the doctrine of equivalents as to that element."). Thus, avoiding the presumption is important, especially when the applicant is likely to remain silent amending the claims in response to the Examiner's Office Action.
The presumption of prosecution history estoppel applies to both Option A and Option B. Option C strictly avoids the case law that applies the presumption, but, as noted above, a court could view this tactic as exalting form over substance and nevertheless apply the presumption. Option D avoids the presumption with respect to the novel limitation at the expense of potentially applying the presumption to the conventional limitation, with a solid tangential argument exception available to overcome the presumption, if needed. Option E although possibly impractical more plainly avoids the presumption altogether. Somewhat paradoxically, although Option C, Option D, and Option E tend to promote form over substance compared to Option A and Option B, they are both possibilities for avoiding the presumption.
 A fifth response is also examined later as Option E that slightly modifies the original hypothetical claim set.
 The goal of the "expendable" limitations here should be that they are sufficiently different (and sufficiently narrow) to gain allowance without further review of the newly-amended claim. Prosecution history estoppel will likely apply, so the added limitations should be unimportant and "expendable," made only to prevent cancelation of the independent claim.
 Note that the only difference between Option E and Option A is that the desired claim (Option E claim 2 and Option A claim 3) was serendipitously written in independent form at the outset, rather than after the first Office Action. Yet, the presumption is flipped between the two options.
 When the Examiner has provided a path forward to allowance, the applicant is likely to take it and remain silent to avoid any further argument-based disclaimer before allowance.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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