Issue 128 | October 29, 2003
Presumption of Prosecution History Estoppel Applies to Unamended Claims - Federal Circuit
 On October 17, 2003, the Federal Circuit issued its decision in Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., et al. (02-1013, -1197).

The Federal Circuit held that summary judgment of no literal infringement was properly granted and that the presumption of prosecution history estoppel set forth by the Supreme Court's Festo decision applies to all of the claims of the patent-in-suit. The Federal Circuit further held that the presumption of prosecution history estoppel applies to claims that were not amended during prosecution but which contain the same limitation that was added by amendment to the broadest claim to obtain allowance.

Since the summary judgment had been awarded prior to the Supreme Court's Festo decision, the Federal Circuit remanded the case to determine whether the presumption of estoppel can be rebutted.

What is not evident from the decision, is that the district court granted summary judgment of no literal infringement to the defendants without the plaintiff obtaining any discovery, thereby greatly reducing the costs associated with the litigation.

Further information is available from the attorney who handled both the district court litigation and the appeal, Michael J. Fink, of Greenblum & Bernstein P.L.C. (mfink@gbpatent.com).

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