Issue 50 | February 17, 2003
Issues Raised by Festo on Remand to Federal Circuit
 Rebuttal of Presumption of Prosecution History Estoppel

1. En banc Federal Circuit argument, February 6, 2003
  1. Intense interest by patent bar
    1. Thirteen amici briefs filed, including one by the United States
    2. Courtroom filled with spectators, many standing
    3. Thirteen judges on panel - Mayer, Newman, Michel, Plager, Lourie, Clevenger, Rader, Schall, Bryson, Gajarsa, Linn, Dyk and Prost
1. Supreme Court Festo holding:
A patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim. ... There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence. 122 S. Ct. at 1842.
3. Global issues posed by the Federal Circuit (non-case specific):
  1. Whether rebuttal of the presumption of surrender, including issues of foreseeability, tangentcialness, or reasonable expectations of those skilled in the art, is a question of law or one of fact; and what role a jury should play in determining whether a patent owner can rebut the presumption.

  2. What factors are encompassed by the criteria set forth by the Supreme Court.
304 F.3d at 1290.

4. Issues of interest to the Federal Circuit panel at argument
  1. Is rebuttal of the presumption a question of law or fact (judge or jury issue)?
    1. Most amici, including the United States, argued that the rebuttal is a question of law to be decided by the court.
    2. Many amici, including the United States, also argued that any underlying factual issues are subsumed in the legal issue and should be found by the court.
    3. Several amici argued that the factual issues should be resolved by the jury using special verdicts or interrogatories; very little support for any 7th Amendment right.

  2. What is "foreseeability"?
    1. SMC's counsel quoted language from the Supreme Court Festo opinion (122 S. Ct. at 1839) and argued that the Court held that if language exists to draft a claim broadly enough to cover the asserted equivalent, the equivalent is foreseeable.
    2. At least Judge Dyk seemed to be leaning toward a test of what would have been reasonably foreseeable to one skilled in the art. If the equivalent would have been foreseeable - the presumption cannot be rebutted. If the equivalent would not have been foreseeable - the presumption is rebutted.
    3. Several judges suggested that foreseeability is factually intense.

  3. What is "tangentialness"?
    1. Court gave very little indication of its understanding of the meaning of tangentialness.
    2. Judge Lourie suggested that it means not directly related to the equivalence issue at hand.

  4. What judicial model to use for determining whether rebuttal is applicable?
    1. Markman claim construction - favored by most amici
    2. Obviousness
    3. Inequitable conduct

  5. Is intent of patentee in making amendment relevant?
    1. Court showed no inclination to use subjective intent as a factor.
    2. Prosecution history must be an objective guide to the public to serve its "notice" function regarding the scope of the claims.

  6. What is patentee's burden of proof to establish rebuttal?
    1. Festo's counsel offered the preponderance of the evidence burden - a low burden favoring patentees.

  7. What standard of review?
    1. United States urged de novo review with "deference" given for trial court's factual findings.
    2. Most amici urged conventional standards - for legal issues, de novo review; for factual issues, clear error (judge) and substantial evidence (jury).
5. Observations
  1. At least some judges envision a Festo hearing.
  2. Timing was not addressed by the court.
    1. Some of the amici urged that Festo issues be resolved before trial (thereby precluding submission of factual issues to jury).
    2. Most amici urged that the time for applying the foreseeability test should be at the time of a narrowing amendment.
6. Practice considerations
  1. Submit sets of claims of varying scope.
  2. Amend claims as little as possible.
  3. Explain reason for all amendments.
  4. Query inventor, describe in specification and claim broadly enough to cover alternatives for key elements and limitations, thereby avoiding necessity for relying on equivalents. If an element or limitation is foreseeable to one skilled in the art, it probably will not be sufficient to rebut the presumption.
To listen to a Roundtable discussion on the above topic, please visit www.aplf.org/events.

To discuss this topic further, please contact the authors, Jill M. Browning, of Greenblum & Bernstein, PLC, Susan P. Pan, at Sughrue, Mion PLLC, and G. Paul Edgell, of Fitch, Even, Tabin & Flannery. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.