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Patentee could not rebut presumption of estoppel; noninfringement finding affirmed

By McKee, Voorhees & Sease, P.L.C.

In a decision Friday, the Federal Circuit affirmed a district court decision holding that application of the doctrine of equivalents was barred as the Festo presumptions had not been rebutted.  The court noted that the patentee did not show that the alleged equivalent was unforeseeable at the time of making the narrowing amendment (which was the cancellation of an independent claim and rewriting a dependent claim into independent form) to the claims or that the narrowing amendment bore no more than a tangential relation to the alleged equivalent, the Federal Circuit upheld the district court's finding of noninfringement.

Perhaps most telling was the Federal Circuit's description of the doctrine of equivalents in general.  As stated by the court:  "The foreseeability principle thus relegates the doctrine of equivalents to its appropriate exceptional place in patent enforcement."

Judge Newman dissented, reiterating her position that simply cancelling an independent claim and rewriting a dependent claim in independent form does not narrow the claim, and thus prosecution history estoppel should not even be implicated.  Also, with regard to the facts here, she decries the majority's position that the accused equivalent was unforeseeable even though it was not developed until 10 years after the patent-in-suit issued and was independently patented.  She also faults the majority for finding the amendment not tangentially related to the equivalent in question simply because it relates to the "added" limitation from the dependent claim.

More concerning Honeywell Int'l, Inc. v. Hamilton Sundstrand Corp. after the jump.

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Full post as published by FileWrapper on April 21, 2008 (boomark / email).