'Festo': Amicus Brief on Behalf of the Patent, Trademark & Copyright Section of the Bar Association of the District of Columbia

The claim language “sealing tings” and the words following that term, in issued claim 1, can be parsed in many ways, but the pertinent terms include the following:

1. Sealing,

2. Rings,

3. Located axially outside said guide rings, and

4. For wiping said internal wall as said piston moves along said tube to thereby cause any impurities that may be present in said tube to be pushed along said tube so that said first annular magnets will be free of interference from said impurities.

The first question in the Festoanalysis is what was amended. The “sealing means” element in the originally filed claim 1 was a statutorily defined means-plus-function element under 35 U.S.C. � 112, sixth paragraph. Claims 1 and 4 from theoriginal application were cancelled, however, and new claim 13 was submitted.

A review of the prosecution history reveals that three of the four terms were amended. The term “sealing” was not amended, but it was part of the change from “sealing meansFor …” to “sealing rings.” The term “rings” was originally “means for …,” and the Festoopinion speaks about the narrowing aspect of this term. [FOOTNOTE 7]The term “located axially outside said guide rings” was newly added with the “guide rings” noted in original claim 4 as being “near the sealing rings.” Finally, the genesis for the fourth term set forthabove for cleaning impurities out of the tube, appears to be from the “wiping engagement” function in original claim 1. Thus, this language was also added to issued claim 1. Again, all of these claim terms were amended except “sealing.”

With this in mind, does the PHE apply to “sealing rings” alone and not the claim term “sealing?” This is a subtle, but critical distinction because it determines the veryfoundation for both the doctrine of equivalents and any infringement analysis that follows. Consider the effect of having the doctrine of equivalents available for the term”sealing” but not for the term “rings.” If “rings” had no equivalents, the accused infringer with one ring instead of two could forcefully argue that one is not equal to two andthat a single ring can never be an equivalent of the claimed “rings.”

2. Festo v. Warner-Jenkinson- PHE Differences

If an amendment was voluntary and related to patentability, as it was with Warner-Jenkinson’saddition of a lower end range of 6.0 pH to its claim, it “would bar theapplication of the doctrine of equivalents as to that [amended] element.” [FOOTNOTE 8]In the Festocase, however, the Federal Circuit held that the application of the doctrine of equivalents is completely barred as to the amended claim limitation, where a limitation was defined only as “claim language.” [FOOTNOTE 9]The difference in terminology used by this Court and the Federal Circuit is symptomatic of the confusion regarding the proper scope and extent of PHE. Furthermore, this sweeping change of terminology by the Federal Circuit to patent claims only having “limitations” and not “elements” is problematic because there is a long and confused history of both terms.

Cases decided after the Federal Circuit’s Festodecision provide ample evidence of the mischief caused by not precisely articulating what should be included in the scope and extent of the PILE, and what should not.

3. Post- FestoCases Evidence The Problem

Consider the Federal Circuit’s own foray into this post- Festoarea in the recent Lockheedcase. [FOOTNOTE 10]In the prosecution of the application that led to issuance of the patent-in-suit in Lockheed, the applicant twice amended claim terms in phrase “b” of the original application.

The pertinent language of [originally filed] limitation [b] stated, ‘means for rotating saidwheel in accordance with a predetermined sinusoidal variation.’ � the applicant amended limitation [b] to state, ‘means for rotating said wheel in accordance with apredetermined rate schedule which varies sinusoidally over the orbit.’ The applicant again amended the claim by adding the phrase ‘at the orbital frequency of thesatellite.’ [FOOTNOTE 11]

Applying PHE under the Festo“limitation” analysis, the Federal Circuit held that “prosecution history estoppel [bars] the application of the doctrine of equivalents’ to limitation [b].” [FOOTNOTE 12]The Federal Circuit determined that the “first amendment wholly replaced the phrase ‘sinusoidal variation’” and therefore held that this “amendmentillustrates that the entire limitation of limitation [b] was changed, not that a completely separate limitation, unrelated to sinusoidal variation, was added.” [FOOTNOTE 13]A more preciseanalysis could be that “sinusoidal variation” was a limitation modifying the means-plus-function element of “means for rotating said wheel” and then dealt with as a separate anddistinct claim term. Alternatively, because it would be a “limitation” that modifies an “element,” PHE applicable to it could affect the modified element. The “sinusoidal variation” could also be considered a separate element and therefore, PHE applicable to it does not affect the doctrine of equivalents analysis of the “means for rotating said wheel.”Further examples of courts wrestling with the application of PHE to claim terms after Festoinclude the ACLARAand Creocases). [FOOTNOTE 14]In ACLARA, one element was found to have three limitations, and the applicant did not amend the limitation at issue. It was decided that PHE could not apply to that unamended limitation. [FOOTNOTE 15]Thus, the court took a more limited approach regarding the scope of PHE based on a more precise parsing of the claim terms. In Creo, the court stated that “[r]ather than woodenly applying Festo, the court will adopt the more nuanced approach” of ACLARA. [FOOTNOTE 16]“Simply put, the issue in this [ Creo] case is … whether the Festobar covers implicit changes in alimitation.” [FOOTNOTE 17]This is the very issue that can be corrected with considered forethought.

4. What Is An “Element” And A “Limitation” – A History

An understanding of the historical treatment and terminology applied to claim terms may provide some guidance to the Court in considering the question raised by this brief and the facts of Festo. Throughout the history of patent law in the United States, this Court, the lower courts, and Congress have used the words “elements” and”limitations” to refer to terms in patent claims.

Our research has taken us from the Patent Act of 1790 to a line of post- Festocases. Beginning in 1790, a patent was required to have merely a written description ofthe invention. [FOOTNOTE 18]Three years later, the written description was required to include “full, clear and exact terms … [to] enable any person skilled in the art … to make, compound,and use the same.” [FOOTNOTE 19]In 1818, this Court introduced, but did not adopt, the term “elements.” [FOOTNOTE 20]In 1836, the law was amended to require that the written description of a patent include claims, [FOOTNOTE 21]and those claims were composed of all theparts mentioned in the combination. These “parts” [FOOTNOTE 22]of a claim were broad portions of the combinations. [FOOTNOTE 23]In 1862, this Court referred to a distinct, specific part of a combination as an “element” and, if one “element” was surrendered, “the thing claimed disappears.” [FOOTNOTE 24]In 1870, the statutory claiming requirement was refined to require that an applicant “particularly point out and distinctly claimthe part, improvement, or combination which he claimed as his invention or discovery.” [FOOTNOTE 25]

In 1879, this Court confirmed that a patent claim is comprised of “elements” or “parts.” [FOOTNOTE 26]The next year, this Court found that there were “necessary elements of the invention.” [FOOTNOTE 27]

Our research indicates that the first time the word “limitation” was applied to a patent claim term was by this Court in 1885. In that year, in the Sargentcase, this Courtconfirmed that patent claims included “elements” but, for the first time, opined on “limitations” within patent claims. [FOOTNOTE 28]In 1894, this Court provided that a claim containing references to the elements included could not be broadened to include additional elements. [FOOTNOTE 29]

The understanding that claims were comprised of “elements” was reinforced by the Patent Act of 1952, which stated in part, “an element in a claim for a combination maybe expressed as a means or step for performing a specified function.” [FOOTNOTE 30]This statute allowed any element to be expressed in means-plus-function type language.

Contrary to the “element” claim term reference in the 1952 Patent Act, the 1965 Patent Act included the undefined word “limitations,” and today the statute continues as 35U.S.C. � 112, fourth paragraph which states in pertinent part: “A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which itrefers)”. [FOOTNOTE 31]The legislative history reveals only that the word “limitations” was added to the patent statute in the context of defining independent and dependent claims. [FOOTNOTE 32]The 1975 Patent Act amended 35 U.S.C. � 112 yet again and included more language regarding limitations and involved multiple dependent claims. [FOOTNOTE 33]The addition of these two limitations-containing paragraphs to � 112 stand in stark contrast to paragraph 6 of the 1952 Act, which contains the element term discussed above.

In 1983, the Federal Circuit remarked that “[f]or a patent claim to have been anticipated under 35 U.S.C. � 102, all the elements in the claim … must have been disclosed ina single prior art reference or device.” [FOOTNOTE 34]In 1985, the Federal Circuit again emphasized “elements” in infringement analysis, providing that “[i]t is also well settled that each “element of a claim is material and essential, and that in order for a court to find infringement, the plaintiff must show the presence of every elementor its substantial equivalent in the accused device.” [FOOTNOTE 35]In 1987, the Federal Circuit againembraced elements as components of a device (either in the accused device or embodied by the invention). [FOOTNOTE 36]That same year, however, the Federal Circuit also used “limitations”when referring to what was set forth in the claims. [FOOTNOTE 37]And in 1999, the Federal Circuit opined that “an accused device that does not literally infringe a claim may still infringe under the doctrine of equivalents if each limitation of the claim is met in the accused device either literally or equivalently.” [FOOTNOTE 38]

The understanding that claims consist of elements is codified in 37 C.F.R. � 1.75(i), which states: “[A] claim sets forth a series of elements, each element or step of the claimshould be separated by a line indentation.”

“Elements” have been a part of claims since at least 1862 and continued to be so until the Festocase changed the nomenclature en bancand brought into sharp focus the question of which claim terms are subjected to PHE. [FOOTNOTE 39]Although the courts and Congress have used different terms to refer to terms in a claim, the Federal Circuit’spronouncement in Festohas only further muddied the proverbial patent waters. Against the backdrop of Festo‘s complete bar rule against the doctrine of equivalents, a change in nomenclature only further complicates the analysis of whether and to what extent PHE bars the application of the doctrine of equivalents to a particular term.

5. PHE Applies To What and Why

When determining the scope and extent of PHE, as it applies to amended claim terms, there are two options. PHE can apply to either the claim term that has been amended or, alternatively, to the claim term that has been amended as well as some scope of related claim terms. [FOOTNOTE 40]If PHE is found to apply to only the claim term that has been amended, the doctrine of equivalents will continue to have a viable role in patent litigation, as evidenced by the ACLARAcase. [FOOTNOTE 41]On the other hand, if PHE is applied to the amended claim term and all related terms under the complete bar of Festo, as inthe Lockheedcase, the doctrine of equivalents will likely cease to exist as a means to thwart the “unscrupulous copyist.” [FOOTNOTE 42]The convoluted, historical descriptions of “element” and “limitation” only serve to further exacerbate this problem that difficulty. For this reason, we ask the Court to clarify the scope and extent of the applicability of PHE to patent claim terms and provide meaningful definitions as to what elements and limitations are.

6. Conclusion

The Patent, Trademark, & Copyright Section of the Bar Association of D.C. respectfully submits that an opinion that comments on which claim terms will be affected byprosecution history estoppel would prevent litigants and judges from spending valuable resources and time on tedious, difficult, time-consuming, and expensive claim termanalysis that produces an uncertain result due to a lack of guidance. Evidence of this already exists with the aforementioned post- Festocases of Lockheed, A CLARA, and Creocases. [FOOTNOTE 40]

Respectfully submitted,
PATENT, TRADEMARK, & COPYRIGHT SECTION OF THE BAR ASSOCIATION OF THE DISTRICT OF COLUMBIA
William P. Atkins
Counsel of Record
Pillsbury Winthrop, LLP
1600 Tysons Boulevard
McLean,Virginia 22102

Counsel for Amicus Curiae
Patent, Trademark, & Copyright
Section of the Bar Association
of the District of Columbia

::::FOOTNOTES::::

FN1None of the parties or their counsel has contributed either substantively or monetarily to the preparation of this brief. Only the Bar Association of the District of Columbia and its members have made a monetary contribution to the creation, preparation, and submission of this brief. Written consent to the filing of this brief has been granted by all parties and is filed herewith. Pursuant to Sup. Ct. R. 37.6, the author also acknowledges and appreciates the assistance of Daniel E. Yonan, Dale S. Lazar, Kevin T. Kramer, and Emily T. Bell.

FN2 Festo Corp.v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 569 (Fed.Cir.2000) (en banc).

FN3 Festo, 234 F.3d at 587-91.

FN4Originally filed claim 1 on page 11 of U.S. Patent Application No. 06/153,999, which matured into the Stoll patent.

FN5 Id.at page 12.

FN6U.S. Patent No. 4,354, 125.

FN7 Festo, 234 F.3d at 589 (“a claim amendment which replaces means-plus function language with language reciting the corresponding structure narrows the scope of the claim”). “Rings” was also recited in original dependent claim 4.

FN8 Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33 (1997) (emphasis added).

FN9 Festo, 234 F.2d at 564 n.1. In the Festo en bancdecision, the court decided that it is “preferable to use the term ‘limitation’ when referring to claim language and the term ‘element’ when referring to the accused device,” but “because the en banc questions use the term ‘element,’” the Federal Circuit used the term “element” instead of”limitation” in its decision.

FN10 Lockheed Martin Corp. v. Space Systems/Loral, lnc., 249 F.3d 1314 (Fed. Cir. 2001) (en banc request denied).

FN11 Id.at 1326 (note that the court adopted the use of the term limitation instead of element in accordance with the Festodecision)

FN12 Id.at 1327(quoting Festo, 234 F.3d at 586).

FN13 Id.at 1327.

FN14 ACLARA Biosciences, Inc. v. Caliper Technologies Corp., 125 F. Supp. 2d 391 (N.D. Cal. 2000); Creo Products lnc. v. Presstek, Inc., 2001 WL 637397 (D. Del. 2001).

FN15 ACLARA, 125 F. Supp. 2d at 402.

FN16 Creo, 2001WL 637397, at *9.

FN17 Id.at *8.

FN18Patent Act, ch. 7, � 2, 1 Stat. 109-12 (1790) (a description that was so particular “as not only to distinguish the invention or discovery from other things before known and used, but also to enable a workman or other person skilled in the art to manufacture” the invention).

FN19Patent Act, ch. 11, � 3, 1 Stat. 318-23 (1793).

FN20 Evans v. Eaton, 16 U.S. (1 Wheat.) 454, 485 (1818) (“[t]he grant [of the patent] is not for the parts [of the invention], because it is for the whole; not in their rudiments or elements… but for the peculiar properties, the new and useful practical results from each machine, and the vast improvements from their combination in this art”) (emphasis added).

FN21Patent Act, ch. 357, � 6, 5 Stat. 117 (1836) (“[inventor must] particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery”).

FN22 Silsby v. Foote, 55 U.S. (1 How.) 218, 224 (1852); Prouty v. Ruggles, 41 U.S. (1 Pet.) 336, 341 (1842) (“this combination, composed of all the partsmentioned in the specification, and arranged with reference to each other, and to other parts of the plough, in the manner therein described is stated to be the improvement, and is the thing patented”) (emphasis added); Brookes v. Fiske, 56 U.S. (1 How.) 211, 220 (1853) (“[t]o infringe, Norcross must use all the partsof Woodworth’s combination”) (emphasis added); Eames v. Godfrey, 68 U.S. (1 Wall.) 78, 79 (1864) (“that there is no infringement of a patent which claims mechanical powers in combination unless all the parts have been substantially used”) (emphasis added); Union Water-Meter Co. v. Desper, 101 U.S. 332, 335-37 (1879) (“[i]t is a well-known doctrine of patent law, that the claim of a combination is not infringed if any of the material partsof the combination are omitted … Our law requires the patentee to specify particularly what he claims to be new, and if he claims a combination of certain elementsor parts, we cannot declare that any one of these elementsis immaterial. The patentee makes them all material by the restricted form of his claim”) (emphasis added).

FN23 Union Water-MeterCo. v. Desper, 101 U.S. 332 (1879).

FN24 Vance v. Campbell, 66 U.S. (1 Black) 427, 429 (1862) (“[i]f one of the elements is given up, the thing claimed disappears”).

FN25Patent Act, Ch. 230, � 26, 16 Star. 198-217 (1870).

FN26 Union Water-MeterCo. v. Desper., 101 U.S. 332, 337 (1879) (“Our law requires the patentee to specify particularly what he claims to be new, and if he claims a combination of certain elements or parts, we cannot declare that any one of these elements is immaterial”)

FN27 Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 224 (1880) (“[i]t is therefore essential to a correct determination of this case to consider what was the material, made by the patentee [sic] an element of his invention”).

FN28 Sargent v. Hall Safe &Lock Co., 114U.S. 63, 86-86 (1885).

FN29 See Wollensak v. Sargent, 151 U.S. 221, 226-27 (1894) (a specific combination claim, containing letters or reference to the elements included, cannot be broadened to include additional elements).

FN30“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. � 112sixth paragraph.

FN3135 U.S.C. � 112 paragraph 4 (emphasis added).

FN32Pub. L. No. 89-83, 79 Stat. 259 (1965).

FN3335 U.S.C. � 112, third paragraph (“A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form”); 35 U.S.C.� 112, fourth paragraph (“Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitationof the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitationsof the claim to which is refers”); 35 U.S.C. � 112, fifth paragraph (“A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependentclaim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered”) (emphasis added).

FN34 Radio Steel & Mfg. Co. v. MTD Prods., Inc., 731 F.2d 840, 845 (1984) (emphasis added).

FN35 Lemelson v. United States, 752 F.2d 1538, 1551 (1985).

FN36 Perkin-Elmer Corp. v. Westinghouse Electric Corp., 822 F.2d 1528, 1533 n.9 (Fed. Cir. 1987) (emphasis added).

FN37 See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 933-35 (1987).

FN38 Sexant Avionique, S.A. v. Analog Devices, Inc., 172 F.3d 817, 826 (Fed. Cir. 1999) (emphasis added); Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, n.*9. (Fed. Cir. 1998) (“we have stated that ‘the All Elements rule might better be called the All Limitations rule. It will be referred to as such throughout the remainder of this opinion’”).

FN39 Vance v. Campbell, 66 U.S. (1 Black) 427, 429 (1862). There is one previous case that mentioned that claim terms were only limitations, but the Festodecision was en banc. See Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1014 n.1 (Fed. Cir. 1998).

FN40If PILE is found to apply to a claim term that has been amended and a related claim term, then the amended term is likely a limitation and the related claim term is likely an element. If, on the other hand, PHE is limited to only the amended claim term, the amended claim term is likely an element.

FN41 ACLARA, 125 F. Supp. 2d 391 (N.D. Cal. 2000).

FN42 Lockheed, 249 F.3d t314 (Fed. Cir. 2001); Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 329 U.S. 605, 607-08 (1950).

FN43 Lockheed Martin Corp. v. Space Systems/Loral, Inc., 249 F.3d 1314 (Fed. Cir. 2001); ACLARA Biosciences, Inc. v. Caliper Technologies Corp., 125 F. Supp. 2d 39I (N.D. Cal. 2000); Creo Products Inc. v. Presstek, Inc., 2001 WL 637397 (D. Del. 2001).