MAXIMUM SECURITY : CONTINUATION AND REISSUE AS MEANS OF OBTAINING OPTIMUM PATENT PROTECTION AFTER FESTO

Transcription

1 MAXIMUM SECURITY : CONTINUATION AND REISSUE AS MEANS OF OBTAINING OPTIMUM PATENT PROTECTION AFTER FESTO I. INTRODUCTION The purpose of this note is to propose a patent prosecution strategy that will yield optimum patent protection. The strategy proposed is counterintuitive because common sense suggests that the broadest patent protection should flow from the presentation of the broadest patent claims possible. While that may once have been true, changes in the availability of powerful doctrines of claim interpretation now render the traditional practice of presenting broad initial claims a particularly counterproductive approach to prosecution. A better way, proposed here, reverses the steps of the traditional approach. Rather than claiming broadly at first, claim narrowly. Rather than narrowing through amendment, broaden through continuation and reissue. While the literal breadth of the claims resulting from the two approaches might theoretically be the same, their functional reach will be very different. That is the lesson implicit in a series of United States Supreme Court decisions imposing prosecution history estoppel on most patent claims narrowed during prosecution. The result of that estoppel is that access to the doctrine of equivalents, which permits a patent to be read to mean more than it says literally, is foreclosed. In order to understand why the proposed strategy will succeed where the traditional approach now fails, it is necessary to appreciate how the law, as applied to patent interpretation, developed and has recently changed. To that end, Part II will describe patent protection in the United States. Part III will consider infringement, followed in Part IV by a discussion of the origins and evolution of the doctrine of equivalents. Part V will introduce continuation patent applications and reissue applications. Finally, Part VI will explain why continuation and reissue are at the heart of the new strategy for obtaining 371

2 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 optimum patent protection. II. PATENT PROTECTION The inventor s innovative spirit is encouraged through statutory provision of temporary commercial monopolies rooted in the Constitution. 1 A patent acts as a temporary commercial monopoly granted to an inventor, vesting them with an exclusionary right to prevent all others from making, using, or offering the protected invention for sale in the United States, and from importing it into the country. 2 In order to obtain a patent, an inventor must, among other things, establish a filing date with the United States Patent and Trademark Office ( PTO ). 3 To establish a filing date, the inventor submits a specification containing a written description, concluding with at least one claim particularly pointing out and distinctly claiming... his invention ; 4 together with a drawing where necessary for an understanding of the invention. 5 Originally, the extent of patent protection was determined by the invention as described in the inventor s written description and drawings; there was no claim requirement, as there is now. 6 While some of the detailed requirements of application for patent protection have changed over time, what has remained fairly constant is the courts 1. U.S. CONST. art. I, 8, cl. 8 ( The Congress shall have Power... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.... ). This constitutional provision gave rise to the statutory provisions of the Patent Act, codified in 35 U.S.C U.S.C. 271(2003) U.S.C The filing date establishes a threshold priority date for examination in the PTO. The requirements described apply to nonprovisional utility patent applications. While patents may be obtained for certain plant variety developments and nonfunctional designs, 101, extends utility patent protection to processes, machines, manufactured devices, compositions of matter, and their useful improvements U.S.C MANUAL OF PATENT EXAMINING PROCEDURE (c) (2003) [hereinafter MPEP]. According to 35 U.S.C. 111, a complete application must include an oath or declaration and the filing fee. They are not required for initial assignment of a filing date, however, and may be submitted at a later time, pursuant to 37 C.F.R. 1.53(f) (2004). 6. Markman v. Westview Instruments, Inc., 517 U.S. 370, 379 (1996). Although it was customary for applicants to append a claim to their specification, there was no statutory recognition of claims prior to the Patent Act of Claims were not required by statute until

3 2005] MAXIMUM SECURITY interpretation of the relationship between the inventor and the public. The relationship remains cast in traditional contract terms, with the commercial monopoly as the public promise, granted in exchange for the inventor s consideration, in the form of the patent disclosure. 7 The inventor establishes the outer boundary of the subject matter eligible for patent protection through a disclosure, which serves as the descriptive basis for what can be claimed as his invention. 8 The inventor s disclosure is more than merely a descriptive basis for his inventive concept. That initial presentation combining written description and visual rendering, now a trinity with the addition of a claim requirement, embraces the entire conceptual universe from which their present and future rights derive. The invention that is defined within and extracted from the disclosure is inevitably a subset of that conceptual material. It is significant that both the landscape of the subject matter disclosed and that subset claimed by the inventor may be defined by visual images as well as words. Just as the disclosure must include drawings if they are necessary for an understanding of the invention, the claims may include references to those drawings where words fail. 9 Thus, there is an acknowledgment that while language is a necessary medium for communicating an inventive entity, it is often not sufficient on its own. The inventor encounters obstacles in the use of language beyond its expressive inadequacy. The very use of language may impose limits on the scope of the invention described which do not correspond to limits on the conceptual scope of the inventor. As stated by United States Supreme Court Justice Anthony Kennedy, the nature of language makes it impossible to capture the essence of a thing in a patent application. 10 Despite its acknowledged limitations, the inventor must use language as precisely as possible to claim that integrated functional subset, consisting of the invention, from the remaining matter which, by being disclosed but going unclaimed, is dedicated to the public See Grant v. Raymond, 31 U.S. 218, (1832). 8. See MPEP at 608 (2003). 9. Id. at 608, (m). 10. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 731 (2002). 11. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605,

4 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 Stated even more bluntly by the Supreme Court, claims allow an inventor to know what he owns, and the public... what he does not. 12 III. PATENT INFRINGEMENT Once a patent issues, the inventor becomes a patentee whose legal rights derive from the Patent Act. 13 The Patent Act describes but does not define how those rights may be violated through patent infringement. 14 The statutory description of infringement is established by reference to the exclusionary right provided by a patent. 15 Thus, patent infringement occurs when the patented invention is made, used, offered for sale, or imported into the United States by someone other than the inventor, an assignee, or licensee. 16 The courts have interpreted the statutory use of the expression patented invention to require that every element of a claim included in the patent assigned to the protected invention be present in the allegedly infringing device or process. 17 To determine those elements, primary importance is now given to the words of the claim, 18 although that has not always been the case. 19 (1950) (Black, J., dissenting, and citing Marconi Wireless Co. v. United States, 320 U.S. 1, 23 (1943)). See also, Johnson & Johnston Associates Inc., v. R.E. Service Co., Inc., 285 F.3d 1046, 1054 (2002). 12. Festo Corp., 535 U.S. at The Patent Act is embodied primarily in 35 U.S.C Raymond C. Areaux & Theodore S. Owens III, Festo s Doctrine of Equivalents: Vitality Reaffirmed in View of New and Old Hurdles, 48 LOY. L. REV. 551, 555 (2002) U.S.C. 271 (2003). 16. Id. 17. Lemelson v. United States, 752 F.2d 1538, 1551 (1985); accord Warner- Jenkinson Co., Inc., v. Hilton Davis Chemical Co., 520 U.S. 17, 40 (1997). 18. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 607 (1950). 19. Markman v. Westview Instruments, Inc., 517 U.S. 370, 379 (1996). Courts have always looked to the inventor s disclosure to determine the substance of the invention for which protection is sought. Prior to the requirement that the disclosure include specific claims, courts could extract the essence of the invention from any portion of the disclosure. Modern claims distill the novelty disclosed and establish the scope of the protection sought. In determining what is patented courts hold a patentee to the subject matter actually claimed, turning to the rest of the disclosure to resolve any ambiguities in the claim language. Thus, while an inventor may claim less than they disclose, they may not be credited with protection for subject matter disclosed but not claimed. 374

5 2005] MAXIMUM SECURITY The patentee may encounter either literal or constructive infringement. In either case, its presence is a purely objective determination; proof of intent is not required. 20 When an allegedly infringing device falls within the literal words of a claim, literal or textual infringement is said to be present, and the inquiry is at an end. 21 The Court has come to recognize another type of infringement as well, however. Looking beyond the literal form of the invention captured in the claims, the Court has looked towards its substance, or the range of its novelty, 22 recognizing non-textual infringement in certain instances, even where the claims are not literally infringed. 23 The modern distinction between literal and non-textual infringement may be a response to changes in patent application drafting, rather than a reflection of a fundamental shift in valuing innovation. 24 Prior to 1870, claims were not required as part of the disclosure. 25 When they were added as a requirement, it was against a backdrop of interpretive practice in which emphasis was placed on the description. 26 In the past, claim language was less specific than it is today. 27 Inventions were described in terms of an embodiment and infringement was analyzed relative to the spirit of novelty represented in the embodiment, rather than its strict form. 28 As a result, even in the immediate aftermath of the claim requirement, infringement analysis did not distinguish between literal and non-textual infringement. 29 As early as 1817, nineteen years prior to the claim requirement and thirty-six years prior to the Court s first formal recognition of non-textual infringement, the Circuit Court of Pennsylvania used language similar to that later used to 20. Warner-Jenkinson Co., Inc., v. Hilton Davis Chemical Co., 520 U.S. 17, 35 (1997). 21. Graver Tank & Mfg. Co., 339 U.S. at Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 731 (2002). According to Justice Kennedy: The language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty. 23. Winans v. Denmead, 56 U.S. 330, 343 (1854). 24. Darcy August Paul, The Judicial Doctrine of Equivalents, 17 HARV. J L. & TECH. 247, 250 (2003). 25. See supra note Paul, supra note 24, at Id. 28. Id. 29. Id. 375

6 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 describe the concept of legal equivalency when it compared two devices in terms of their function and result. 30 In finding that infringement had occurred despite the patent for a nail making device not having been literally infringed, the court in Gray v. James stated, where the machines are substantially the same, and operate in the same manner, to produce the same result, they must be in principle the same. 31 Once the claim requirement was established, claim language evolved, becoming more precise in practice, and the judicial distinction between literal and non-textual infringement emerged. 32 IV. THE DOCTRINE OF EQUIVALENTS In Winans v. Denmead, the Supreme Court formally recognized that a patentee could indeed rely upon a patent to mean more than it says literally. 33 This principle has come to be known as the doctrine of equivalents. 34 Since Winans, the doctrine of equivalents has enabled the holder of a patent to defend their interest against an infringer who avoided literal infringement by utilizing the patentee s original invention with insubstantial alterations. 35 Although widely regarded as making its first appearance in Winans, the doctrine of equivalents actually formalized an already established recognition of nontextual infringement. 36 However, it was in Winans that the Court framed the doctrine s essential message, when it held that where form and substance are separable it is substance that defines the patent. 37 Ross Winans had obtained patent protection for a cleverly redesigned rail car for transporting and dispensing coal. 38 The 30. Id. at F. Cas. 1015, 1016 (1817). The Gray court used terminology similar to that later recognized as function-way-result analysis associated with the doctrine of equivalents by the Supreme Court in Machine Co. v. Murphy, 97 U.S. 120, 125 (1878). See also Paul, supra note 24, at Paul, supra note 24, at U.S. 330 (1854). 34. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950) (recognizing Winans as its own first application of the doctrine of equivalents). 35. Id. at 607; Paul, supra note 24, at See Paul, supra note 24, at Winans, 56 U.S. at Id. at

7 2005] MAXIMUM SECURITY state-of-the-art coal car prior to Winans s work was of a rectangular box shape in which most of the weight of the coal pressed downward on the flat bottom of the car. 39 The four sides, while supporting little of the load s weight, had to be heavily constructed to withstand its outward pressures, thus constituting much of the material weight of the car. As a result, these cars were limited to a maximum practical payload equal to their own weight, and suffered considerable wear and tear from repeated loading and unloading. 40 Winans s innovation was to employ coal cars shaped like inverted cones. 41 The design was curvilinear, with cross sections in the shape of circles becoming progressively narrower, from the top, where the coal was loaded, to the bottom, where it was dispensed. 42 The conical shape provided more even distribution of carrying and loading forces, with the result that Winans s design allowed a car to carry twice its own weight in payload, while suffering less loading and unloading stress and thus, being more durable than its predecessors. 43 The success of the Winans design apparently invited imitation, because the Denmeads then introduced a coal car achieving similar advantages using a similar design. The Denmead coal car avoided directly recreating Winans s by retaining a formally rectilinear design. By simulating a conical shape with octagonal rather than circular cross sections, the Denmead car simulated the performance specifications achieved by the conical design, without actually copying it. 44 Winans sued, asserting infringement, and the trial court, finding no literal infringement, ruled for the Denmeads. 45 In reversing, the Supreme Court stated the yet unnamed doctrine of equivalents in perhaps its broadest terms when it held that a patentee is entitled to protection not only for the form in which his invention is claimed, but for every form in which his invention may be copied Id. 40. Id. at Id. at Id. 43. Id. at Id. 45. Id. at Id. at

8 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 Although remaining unnamed, the doctrine of equivalents was developed and refined in Machine Co. v. Murphy. In Murphy, the Court established function-way-result analysis when it asserted, if two devices do the same work in substantially the same way and accomplish the same result, they are the same, even though they differ in name, form or shape. 47 The doctrine was almost named when the Court applied what it referred to as the rule of equivalency in During this early period in its history, equivalency was applied exclusively to devices with mechanical components. 49 In time, it came to be applied to chemical compositions as well. 50 As can be seen from these early descriptions of the principle underlying the doctrine, the Court saw the analysis as applying to the invention as a whole, by capturing its overarching and essential identity. The modern application of the doctrine of equivalents begins with the Court s decision in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950). 51 Linde Air Products Company ( Linde ) owned a patent which included claims to welding fluxes. 52 In an infringement action brought by Linde against Graver Tank & Manufacturing Company ( Graver ) and others, the trial court had applied the doctrine of equivalents in finding four of the flux claims infringed. 53 Curiously, the trial court had found equivalence, and the Court of Appeals had affirmed, despite the fact that the patented and accused fluxes were chemically distinct. 54 The patent owned by Linde claimed fluxes combining alkaline earth metal silicate and U.S. 120, 125 (1878) accord Johnson & Johnston Associates Inc., v. R.E. Service Co., Inc., 285 F.3d 1046, 1064 (2002) (Newman, J., dissenting). See supra note 30 for an example of the use of similar language by a state circuit court, some seventy years earlier. 48. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 36 (1929). 49. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950). 50. Id. 51. MARTIN J. ADELMAN ET AL., CASES AND MATERIALS ON PATENT LAW 777 (2d ed. 2003); see also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997). 52. Graver Tank & Mfg. Co., 339 U.S. at 606. According to WEBSTER S THIRD NEW INTERNATIONAL DICTIONARY (Unabridged ed. 1993), a flux is a substance applied to surfaces to be joined by... welding just prior to or during the operation to clean and free them from oxide and promote their union. 53. Graver Tank & Mfg. Co., 339 U.S. at Id. at

9 2005] MAXIMUM SECURITY calcium fluoride, and a specific composition (Unionmelt Grade 20) containing silicates of two alkaline earth metals, calcium and magnesium, in addition to calcium fluoride. 55 The accused flux (Lincolnweld) produced by Graver was similar, but substituted manganese silicate for magnesium silicate. 56 Thus, in alleging infringement, Linde was effectively asserting that manganese, a transition metal with multiple valence states, was legally equivalent to a Group II alkaline earth metal, despite having distinct chemical properties. In reviewing the applicability of the doctrine to these claims, the Court was faced with a logical improbability: that chemically distinct elements were legally the same. Nevertheless, the Court affirmed the judgment of infringement stating: In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalent. 57 Although beginning to move away from its previous holistic, substance of the invention abstraction by looking first to the claims in evaluating infringement, 58 the Court had looked to purpose and function, rather than to structural or descriptive formality, in determining equivalency in Graver Tank. 59 The Court expressly rejected the prior approach in favor of an analytical assessment of infringement, when it stated, the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. 60 The decisions of the Court restricting the doctrine of equivalents to the claim elements represent the more recent trend limiting its protective function. This trend reflects a rebalancing of two distinct interests set into opposition by application of the doctrine. The issuance of patents may be seen as supporting both an incentive interest on behalf of inventors and a notification interest on behalf of the public. The patenting process encourages dissemination of new information by offering the 55. Id. 56. Id. 57. Id. at Id. at Id. at Warner-Jenkinson Co., Inc., v. Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997). This deconstructionist approach to infringement analysis is known as the all-elements rule. See also Areaux, supra note 14, at

10 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 commercial advantage of patent protection in exchange. 61 It does so by providing inventors, and those with capital, with incentives to invent, disclose, and invest. 62 Thus, the patent serves a protective function for the inventor while simultaneously informing and empowering the public. In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (Festo VII), 63 the Court established a limited set of circumstances in which a patentee could invoke the doctrine of equivalents for claim limitations introduced during prosecution. 64 In its holding, the Court expressed concern that by extending the protective function of a patent beyond its literal terms, the doctrine of equivalents had created uncertainty about the limits of patent protection. 65 As a result, the equally compelling public notice function of the patent was being undercut. 66 Despite the deterrent effect on investment posed by this uncertainty, the Court has consistently affirmed the doctrine of equivalents, at least in principle, as ensuring the incentives for invention. 67 While being endorsed by the Court in principle, concern over an excessively liberal application of the doctrine of equivalents has resulted in the tendency of the United States Court of Appeals for the Federal Circuit, which hears almost all patent litigation appeals, 68 to interpret claims narrowly and resolve uncertainties against the patentee MPEP 608 (2003). 62. KIMBERLY A. MOORE ET AL., PATENT LITIGATION AND STRATEGY 4 (2d ed. 2003) U.S. 722, (2002) [hereinafter Festo VII]. Prior to the Supreme Court s decision in Festo VII, the litigants had engaged one another once in federal district court, Festo I; four times before the Federal Circuit, Festo II, IV, V, and VI; and one prior occasion before the Supreme Court, Festo III. 64. Id. 65. Id. at See id. at Id. 68. Where the patent question being appealed arose as a compulsory counterclaim, the Supreme Court has held that the patent appeal is to be heard by the regional circuit having jurisdiction over appeal of the plaintiff s claim, rather than the Federal Circuit. Otherwise, the Federal Circuit hears all patent litigation appeals. See MOORE ET AL., supra note 62, at 77, (citing Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 122 S. Ct (2002)). 69. See Areaux, supra note 14, at

11 2005] MAXIMUM SECURITY In Festo VII, 70 the patentee s right to invoke the protection of the doctrine of equivalents was affirmed in principle by the Supreme Court, but in a constrained form. 71 Festo VII reiterated the earlier Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co. 72 decision, holding that the prosecution history of a patent claim determines applicability of the doctrine of equivalents to specific aspects of its terms. 73 Where an original claim was narrowed by amendment, either to distinguish its novelty from the known state of the art, or to secure patentability by coming into compliance with 35 U.S.C. 112 by correcting a failure to particularly point out and distinctly claim the invention, 74 any effort to recover a portion of the disclosure relinquished in the process of amendment would be barred by prosecution history estoppel. 75 Where the prosecution history did not reveal the reason for a narrowing amendment, the Court proposed a rebuttable presumption that it was undertaken to avoid the prior art. 76 Festo VII went even farther, proscribing later application of the doctrine of equivalents to a narrowed claim element unless the patentee proves that the particular equivalent was not surrendered. 77 In order to establish that the equivalent was not surrendered, the patentee must show that at least one of three alternatives existed: either (1) the equivalent was unforeseeable at the time of amendment; (2) the rationale for the amendment is only tangentially related to the equivalent; 78 or (3) it would have been unreasonable under the circumstances to expect the U.S. 722 (2002). 71. Areaux, supra note 14, at U.S. 17 (1997). 73. Festo VII, 535 U.S. at U.S.C. 112 (requiring, inter alia, The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. ). 75. Festo VII, 535 U.S. at Id. at Id. 78. The Court s language in Festo VII is a little obscure concerning this second alternative. However, in its previous unanimous opinion in Warner- Jenkinson Co., Inc. v. Hilton Davis Chemical Co., the Court stated: Where the reason for the change was not related to avoiding the prior art, the change may introduce a new element, but it does not necessarily preclude infringement by the equivalents of that element. Thus, where the motivation for the amendment was not to disavow the equivalent in the first place, the amendment and the equivalent are only tangentially related. 520 U.S. 17, 33 (1997). 381

12 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 patentee to describe the equivalent at the time. 79 Converging with the new Festo VII surrender presumption, the carryover of the all-elements rule and the presumption in favor of prosecution history estoppel from Warner-Jenkinson 80 is the established policy of denying application of the doctrine of equivalents to material revealed by the patentee but not included in the patent claims. 81 These limitations coalesce sharply to bar application of the doctrine of equivalents in many cases, preserving it for use in exceptional circumstances, 82 while committing the inventor to the representations made during the application process Consequently, as observed by a commentator: Judges have wide latitude in almost any patent suit to foreclose the doctrine of equivalents as a matter of law, thus preventing juries from applying the doctrine of equivalents to find infringement. 84 The recent Federal Circuit decision in Honeywell International, Inc. v. Hamilton Sunstrand Corp. 85 reveals how the confluence of factors discussed in the previous paragraph limit application of the doctrine of equivalents today. The court s holding shows how distant and unavailable the doctrine has become when compared to its earlier applications in Winans and Graver Tank. The case also highlights how actions taken during prosecution become critical in determining what protections are available in the event of litigation. Honeywell International, Inc. ( Honeywell ) owned two patents directed to a device which provided a continuous and controlled flow of compressed air for use on aircraft. 86 The Honeywell device was an improvement on previous devices serving a similar purpose in that it established a minimum flow 79. Festo VII, 535 U.S. at 740, 741 (summarizing, The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent. ) U.S. 17 (1997). 81. Johnson & Johnston Associates Inc. v. R.E. Service Co., Inc., 285 F.3d 1046, 1055 (2002). 82. See id. at 1059 (Rader, J., concurring). 83. Festo VII, 535 U.S. at Paul, supra note 24, at F.3d 1131 (2004). 86. Id. at

13 2005] MAXIMUM SECURITY set point, which allowed the device to operate more efficiently. 87 The set point was determined in the Honeywell device by the positioning of adjustable inlet guide vanes, in response to ambient air flow conditions. 88 Hamilton Sunstrand Corp. ( Sunstrand ) manufactured a similar device which achieved similar performance efficiency by means of a minimum flow set point. 89 The primary difference between the Sunstrand and Honeywell devices was that while Honeywell s determined set point directly by means of ambient air flow, Sunstrand s made that determination by relating ambient temperature to other air flow parameters. 90 For both devices, once the set point was established, flow control was achieved at least in part by adjustment of the inlet vane positions. 91 Honeywell sued Sunstrand for infringement, and a jury determined that although Honeywell s patent had not been literally infringed, it had been infringed under the doctrine of equivalents. 92 On appeal, the Federal Circuit focused on the prosecution history of the claims in question. 93 The claims that the trial court had found infringed under the doctrine of equivalents had originally been presented as dependent claims and rewritten during prosecution when the broader claims from which they depended were canceled. 94 Those originally dependent claims were rewritten as independent claims and the patent issued with them in that form. 95 The Federal Circuit concluded, consistent with their post Festo VII decisions, that canceling a broader claim and substituting a narrower dependent claim in independent form created a presumption that the patentee had sacrificed the matter in between. 96 The Federal Circuit vacated the judgment of the trial court in which Sunstrand had been found to infringe 87. Id. 88. Id. 89. Id. at Id. 91. Id. 92. Id. at Id. 94. Id. at Id. 96. Id. at 1143 (citing Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314 (2003)); Ranbaxy Pharmaceuticals, Inc. v. Apotex, Inc., 350 F.3d 1235 (2003). 383

14 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 under the doctrine of equivalents. 97 On remand Honeywell would be required to rebut the presumption that the doctrine of equivalents was unavailable to its amended claim by demonstrating the presence of one of the Festo VII factors. 98 Thus, as the result of actions taken during prosecution to place the claims in allowable form, the Federal Circuit found a presumption that the doctrine of equivalents could not be applied in determining infringement. 99 Consequently, despite a jury s having found infringement through equivalence, Honeywell could prevail only on a showing of literal infringement, unless they could overcome the presumptive bar to equivalence by proving the presence of one of the Festo VII factors, leading Judge Pauline Newman to observe, little is left of access to equivalency. 100 V. CONTINUATION AND REISSUE As the Honeywell decision demonstrates, the Supreme Court s holding in Festo VII fundamentally limits when and to what extent a patentee can rely upon the doctrine of equivalents in protecting against infringement. 101 The result of those limitations is that alternative mechanisms for broadening patent protection, pursued during examination before the PTO, now appear to be the patentee s most effective method for assuring optimum patent protection based upon their disclosure. Despite these alternatives being administrative determinations, all courts recognize the procedural legitimacy of continuing patent applications ( continuations ) 102 and requests for reissue of a granted patent ( reissues ). 103 Continuation and reissue are 97. Honeywell Int l, Inc., 370 F.3d at Id.; see supra notes and accompanying text. 99. Honeywell Int l, Inc., 370 F.3d at Id. at 1153 (Newman, J., dissenting) Festo VII, 535 U.S. 722 (2002) The introductory comments to the 2003 revision of the MPEP governing examinations before the PTO states that the statutory basis for the procedures, which include continuation examinations, have remained substantially the same since the Patent Act of MPEP Introduction (2003). See also Warner-Jenkinson Co., Inc., v. Hilton Davis Chemical Co., 520 U.S. 17, 26 (1997) Chief Justice Marshall first interpreted the Patent Act of 1793 to allow for reissue of a patent in Grant v. Raymond, 31 U.S. 218, 244 (1832). Reissue for the purpose of broadening patent claims was explicitly authorized by the Court in Miller v. Brass Co., 104 U.S. 350 (1882), in which a timeliness 384

15 2005] MAXIMUM SECURITY options available to a patentee during and after prosecution of their original patent claims 104 and are utilized as a means for broadening patent claims. 105 In affirming that a patentee who fails to claim all they disclose surrenders any claim under the doctrine of equivalents, the Federal Circuit has recognized continuation and reissue as the appropriate means for realizing the full patent protection warranted by the inventive disclosure. 106 According to the court, the patentee who fails to claim all that they disclose has two avenues of recourse. First, before the patentee s original application issues as a patent, they may file a continuation application in which they rely upon the disclosure in the original application and submit additional broadening claims. 107 Second, if the patent issues before the patentee recognize their oversight, the surrendered matter may be reclaimed from the public domain within two years of issuance of the original patent. 108 According to both the Supreme Court and the Federal Circuit, where issuance has occurred, reissue, rather than reliance on the doctrine of equivalents, is the statutorily and judicially favored mechanism for broadening an existing patent s protective scope. 109 Continuation and reissue are favored methods for obtaining broader patent claims in part because, by virtue of their being prosecuted before the PTO, they assure that the patent monopoly is being extended to matter examined and approved in accordance with congressional intent as expressed through the Patent Act. 110 In addition, both approaches enhance the notice function of patents by resulting in formally constraint in the form of a two year statutory limitation was recommended as well. Justice Black, in his dissent in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 615 (1950), cites Miller in describing reissue as the judicially preferred means of broadening patent claims MPEP (2003); 35 U.S.C 120, 251 (2003) Johnson & Johnston Associates Inc., v. R.E. Service Co., Inc., 285 F.3d 1046, 1055 (2002) Id Id Id See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 615 (1950) (Black, J., dissenting). See also Johnson, 285 F.3d at 1059 (Rader, J., concurring) Cf. Johnson, 285 F.3d at 1055 (emphasizing in barring the doctrine of equivalents the importance of limiting patent protection to matter examined by the PTO). 385

16 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 documented claims which disclose the full scope of the protected invention to the public. Continuation, available during prosecution of a patent claim, permits filing subsequent patent applications in which new claims may be introduced. 111 A continuation can be based upon the disclosure of an earlier filed parent application prior to its abandonment or issuance. 112 The new claims in a continuation application may be broader than those in the parent application, provided they draw upon matter disclosed therein. 113 Because the continuation relies on the disclosure of the parent, it requires no additional oath or declaration. 114 Continuation s great advantage over the reissue is that, unlike the latter, it is entirely discretionary; the inventor s failure to claim more in the parent need not be due to error. 115 Reissue, on the other hand, enables a patentee to reclaim matter dedicated to the public after a patent issues containing claims to less than the subject matter disclosed. Reissue was available to inventors originally as a means to correct patent errors but has since been interpreted by the Court to include broadening of the original patent claims to include material originally disclosed but not claimed by the inventor. 116 There are conditions placed on the reissue privilege, however. The two distinct requirements for filing a reissue application are: first, the patent must be defective, either due to an inadequate specification, or because the patentee claimed more or less than they were entitled to; and second, the defect must have resulted from error, without deceptive intent. 117 The error provision is liberally construed to permit correction of defects, 118 while the term error itself has been interpreted to 111. MPEP (2003) Id Johnson, 285 F.3d at C.F.R. 1.63(d)(1)(iv) (2004) Compare 35 U.S.C 120 (2003), with 35 U.S.C. 251 (2003) Miller v. Brass Co., 104 U.S. 350, 352 (1882) (holding subject matter disclosed, but not evident in the invention granted patent protection was dedicated to the public and suggested a two year statutory period subsequent to the grant in which the patentee could reclaim inadvertently surrendered matter). Since Miller, reissue rules have been codified and are described in the rules governing proceedings before the PTO. See MPEP at In re Wilder, 736 F.2d 1516, 1518 (1984); 37 C.F.R (2004) In re Wilder, 736 F.2d at

17 2005] MAXIMUM SECURITY mean inadvertence, accident, or mistake. 119 In addition to the threshold conditions, there are two further limitations. First, while a reissue may be sought at any time during the term of a patent, one seeking broader claims must be sought within two years of issuance. 120 Second, the broader claims may include any disclosed matter not initially claimed, but they may not attempt to recapture matter previously claimed but surrendered through amendment during the initial prosecution. 121 Because a patentee can use continuation and reissue to broaden the scope of claims during and after prosecution, their initial claims need not be overbroad. By avoiding overbroad initial claims, the patentee avoids having to affirmatively narrow them in order to obtain allowance. As a result, the strategic use of continuation and reissue can yield broad protection without incurring the liabilities associated with narrowing claims during prosecution. Consequently, continuation and reissue are at the crux of the proposed prosecution strategy for obtaining optimum patent protection. VI. OPTIMUM PATENT PROTECTION The patent prosecution strategies of the past involved applicants claiming broadly, amending to narrow their claims as necessary to obtain allowance, and then relying upon a liberal judicial policy for application of the doctrine of equivalents. As a result, amending claims during prosecution became common practice. 122 In the present environment, however, those prosecution strategies have become significantly compromised. According to the holding in Festo VII, there is a presumption that an inventor has dedicated to the public, through surrender, that portion of an original claim winnowed away by narrowing amendment. 123 Consequently, claiming broadly and narrowing by amendment now has the unintended result of disclaiming 119. Hewlett-Packard Co. v. Bausch & Lomb Inc., 882 F.2d 1556, 1565 (1989) U.S.C. 251 (2003) Ball Corp. v. United States, 729 F.2d 1429, 1436 (Fed. Cir. 1984) ( The recapture rule bars the patentee form acquiring, through reissue, claims that are of the same or broader scope that those that were canceled from the original application. ) Areaux, supra note 14, at Festo VII, 535 U.S. 722, 740 (2002). 387

18 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 assertions of equivalency as well as literal patent protection, for material revealed in the disclosure but not specifically embraced in the final claims. Fully utilizing the procedures of continuation and reissue presents an alternative to an inadvertent disclaimer of assertions of equivalency. After Festo VII, that alternative is an increasingly attractive approach to ensuring the broadest possible patent protection. Rather than claiming broadly in the original application, the proposed patent prosecution strategy is to present pinpoint claims. Pinpoint claims are those claims narrowly tailored, based upon a pre-application prior art investigation conducted by the patentee or practitioner, to obtain allowance from the outset, with minimal amendment. Because pinpoint claims are drafted to obtain allowance of the patent by the PTO without the need for narrowing, they retain the protection of the doctrine of equivalents by avoiding the foreclosing effect of amendment. Feedback and additional research occurring during prosecution of the parent application are then used to design broader claims to be introduced in a continuation, filed at any time prior to issuance of the parent. 124 The only drawback to presenting very narrow original claims is that less may be claimed in doing so than the PTO would allow. However, if the parent application issues as a patent and additional information acquired during licensing or commercialization of the invention indicates that more of the disclosure could have been included in the claims, additional broadening may be applied for through reissue within two years. 125 Thus, even where the proposed strategy seems deficient by resulting in a patent issuing on unnecessarily narrow claims, it includes a failsafe in which the patentee may resort to reissue to fully protect their claim, provided they are timely in doing so. 126 The advantage to the patentee of a prosecution strategy initially presenting pinpoint claims and then relying upon continuation and reissue to broaden the protection obtained is threefold. First, obtaining the original patent will be expedited by the streamlined application. By presenting an application tailored for allowance, some degree of protection will be MPEP (2003) U.S.C. 251 (2003) C.F.R (2004).

19 2005] MAXIMUM SECURITY obtained earlier, establishing the patentee s right to damages should another party begin to practice their invention. Second, by avoiding narrowing amendments, the patentee never cedes the right to claim all that they originally disclosed. As discussed, prosecution history estoppel, which prevents a patentee from later trying to reclaim what they relinquished in the process of obtaining allowance of their patent, is triggered by narrowing amendment during prosecution. 127 Because the presentation of pinpoint claims avoids narrowing during prosecution, subsequent continuation or reissue applications may reach back into the disclosure to obtain the fullest protection to which the patentee is entitled. 128 Third, the same avoidance of narrowing amendments which keeps prosecution history estoppel at bay also retains the full protection of the doctrine of equivalents in the event of infringement. 129 Pursuing patent protection through implementation of the prosecution strategy described here also has significant overall cost benefits, despite being more expensive initially. Because prosecution is likely to culminate in issuance of a patent both free from significant prosecution history estoppel limitations and to which the doctrine of equivalents remains available, the resulting protection should provide an optimum blend of subject matter coverage and deterrence. The precision of the resulting claims should reduce the likelihood of unintentional infringement, while retention of the equivalency doctrine should reduce the likelihood of intentional infringement. As a result, the likelihood of being forced into litigation should be reduced. This is an important result because the costs associated with patent litigation are extraordinary. In California, for example, the median legal costs for a patent litigation were nearly $2,500,000 in By contrast, the cost for patent protection, including its filing, prosecution, and the payment of maintenance fees is currently about $25, The prosecution strategy 127. Supra notes 71, 74 and accompanying text; see 84 J. Pat. & Trademark Off. Soc y 692, 696 (2002) Cf. supra note See Festo VII, 535 U.S. at MOORE ET AL,. supra note 62, at 107 n.2, (citing 1999 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION, REPORT OF ECONOMIC SURVEY 72 tbl. 22) SAMSON HELFGOTT, PCT FILING AND INTERNATIONAL PROSECUTION 3 (2004), prepared for AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION 389

20 THOMAS JEFFERSON LAW REVIEW [Vol. 27:371 proposed in this note will be more expensive than this figure indicates because of the additional costs associated with filing and prosecuting continuation and, where necessary, reissue applications. Nevertheless, the one-hundred fold cost differential between prosecution and litigation makes the expenses to be incurred in even the most elaborate prosecution a tremendous bargain because they are likely to avert the burden of later litigation. VII. CONCLUSION Patent law has changed, with important implications for patent prosecution strategy. The restrictions now placed on the availability of the doctrine of equivalents, and the foreclosing role of prosecution history estoppel in attempts to protect disclosed matter trimmed from original claims during examination, make the once common practice of claiming broadly and amending as necessary to obtain allowance, a perilous and likely disastrous patent prosecution strategy. Ironically, that common sense approach, motivated by a desire to maximize the area of commercial monopoly, will most effectively shift disclosed matter out from under the umbrella of commercial protection. Today, a better strategy for obtaining optimum patent protection involves a multi-phased approach to prosecution, utilizing continuation and the failsafe of reissue to reinforce an initial application containing pinpoint claims. Rather than submitting claims that describe the invention in its broadest possible terms, the intent here is to obtain the broadest possible patent protection by initially claiming more narrowly, in order to realize allowance without sowing the seeds of later prosecution history estoppel or sacrificing the doctrine of equivalents. Broader claims may be introduced in a continuation, filed at some time prior to issuance of the parent application. If the parent application issues as a patent and additional information indicates that more of the disclosure could have been included in the claims, further broadening may be applied for through reissue within two years. The multi-phased approach to PRACTICAL PATENT PROSECUTION TRAINING FOR NEW LAWYERS 2004 ROADSHOW, at PPNL/20049/HelfgottSamFINAL.pdf. 390

21 2005] MAXIMUM SECURITY obtaining patent protection described herein will provide maximum security by establishing an early filing date and achieving accelerated allowance through the presentation of streamlined initial claims, resulting ultimately in the broadest literal claims possible, all while avoiding prosecution history estoppel and retaining, uncompromised, the doctrine of equivalents, should infringement occur. Paul Gillette B.S. Physics, University of California San Diego; registered to practice before the United States Patent and Trademark Office; J.D. candidate, Thomas Jefferson School of Law, May First, last and always I want to thank my wife Lori, whose love so brightens my life. Special thanks to Professor Julie Cromer for her advice, encouragement, and editorial assistance; and to Professor Bruce Greenhaus for reviewing the note s content. Thanks also to my several editors: Chris Ramey, Amanda Van, Shannon Wilson, Andrew Moher, and Chris Shanahan. 391

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