Issue 219 | June 23, 2004
CAFC En Banc Decision

An important en banc Federal Circuit decision came down on June 4th in Honeywell v. Hamilton Sundstrand regarding prosecution history estoppel and Festo.

The basic holding is that when an allowable dependent claim depending from a rejected independent claim is rewritten as an independent claim, the presumption of prosecution history estoppel applies, regardless of whether an amendment merely limited a preexisting claim element or whether it added a completely new element to the claim at issue.

For example, consider an independent claim directed to elements ABCD that is rejected, while a dependent claim adding element E is objected to but allowable if rewritten in independent form. In this case, the Federal Circuit held that a presumption of prosecution history estoppel applies if the original base independent claim directed to elements ABCD is cancelled and the rewritten independent claim directed to elements ABCDE is added, even if element E was a completely new element to the claim at issue. Although, the Federal Circuit expressly held that the scope of the presumptive surrender applies only to the amended or newly added limitation—not to any unamended limitations—the presumptive surrender applies to the entire scope of equivalents, even for a newly added limitation.

Judge Newman's lone, spirited dissent presents a compelling case for a better reading of the doctrine of equivalents, and perhaps foreshadows the return of the doctrine of equivalents to the Supreme Court:

My colleagues not only impose the presumptive surrender of Festo, but also presume estoppel against the entire universe of technology. That is, instead of presuming surrender of the territory between the original scope of the claimed element and the scope of that element after a narrowing amendment -- the rule developed in Festo -- the court now presumes unlimited surrender when an element was not originally claimed at all and therefore presents no outer limit of surrendered territory.

Newman concluded with these thoughts:

Today's new rule solves no problem, rights no wrong, addresses no unmet need. Future applicants may attempt to obtain access to the doctrine of equivalents through avoiding dependent claims. Patent applications will cost more, since independent claims carry a heavier fee than dependent ones. There will be more opportunities for mistakes, and insignificant changes in the wording of limitations that would have been incorporated by reference will be fodder for litigation. Examination will probably take longer, because the use of dependent form adds organization to the claims and makes them easier to understand. The losers are those patentees who had no reason to foresee today's new rule, and future patentees who will have to cope with it.

To view the full decision visit http://fedcir.gov/opinions/02-1005.doc

Please contact Eric R. Moran of McDonnell Boehnen Hulbert & Berghoff LLP, at 312-913-0001 or moran@mbhb.com, with any questions you might have about these materials.

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