11/04/2013

Integrated Tech. v. Rudolph Tech: No Exceptions to Prosecution History Estoppel when Amendment is Directly in Response to Examiner Rejection


Category: Infringement 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleIntegrated Tech. Corp. v. Rudolph Tech., Inc., No. 2012-1593, 1618 (Fed. Cir. Nov. 4, 2013).
Issues
[1] Rudolph argues that the court erred as a matter of law by concluding that the amendment was not narrowing. […] Rudolph argues that the amendment narrowed the scope of the claim by reciting that the probe tip must be “driven in contact with said window” in both recited states. It argues that prosecution history estoppel presumptively applies because the narrowing amendment was in response to patentability rejections.
Integrated Tech. at *5.
[2] Whether ITC [Integrated Tech. Corp. ] met its burden of proving that an exception [such as tangential relation or forseeability] to prosecution history estoppel applies.
Id. at *7 (text added).
Holdings
[1] We hold that ITC’s narrowing amendment during prosecution surrendered the equivalent from the scope of the asserted claims and that prosecution history estoppel bars the application of the doctrine of equivalents.
Integrated Tech. at *10.
[2] We hold that [Integrated Tech. Corp. ] has not [proven any exceptions apply because (i) the narrowing amendment was purposely related to the equivalent and (ii) the surrendered subject matter was forseeable at the time of amendment], and therefore prosecution history estoppel bars the application of the doctrine of equivalents.
Id. at *7 (text added).
 

Procedural HistoryRudolph Technologies, Inc. (Rudolph) appeals from the district court’s judgment that it infringes U.S. Patent No. 6,118,894 (’894 patent). Rudolph challenges the court’s denial of its motion for judgment as a matter of law (JMOL) that prosecution history estoppel bars the application of the doctrine of equivalents.
Integrated Tech. at *2.
 
 
Legal Reasoning (Rader, CJ, Clevenger, Moore)
Background
Representative Claim 1:An integrated circuit probe card inspection system . . . comprising: . . .
a window with a flat surface contacted by said probe tip, said viewing system obtaining said digital image through said window in a first state where said probe tip is driven in contact with said window with a first force, and in a second state where said probe tip is driven in contact with said window with a second force, said second force being different from said first force . . . .
Integrated Tech. at *3.
Prosecution History Estoppel, generallyProsecution history estoppel prevents a patentee from recapturing through the doctrine of equivalents the subject matter that the applicant surrendered during prosecution. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734 (2002). It presumptively applies when the applicant made a narrowing claim amendment related to patentability. Id. at 736–37.
Id. at *4.
Exceptions to EstoppelA patentee bears the burden to rebut the presumptive application of prosecution history estoppel by establishing one of three exceptions by a preponderance of the evidence. First, “[t]he equivalent may have been unforeseeable at the time of the application.” [...] Second, “the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question.” Id. Third, “there may be some other reason suggesting that the patentee could not reasonably be expected to have described the [equivalent].” [...] Whether a patentee has rebutted the presumption is a question of law that we review de novo. [...]
Id. at *4-5 (internal citations omitted).
Amendment in Response to Rejection Presumably Falls Under Prosecution History Estoppel
Prosecution HistoryAs originally filed, claim 1 recited in relevant part only “a window with a flat surface contacted by said probe tip.” The Examiner rejected the original claim as indefinite under 35 U.S.C. § 112, paragraph 2, and anticipated under § 102(b) by U.S. Patent No. 4,757,256 (Sato). J.A. 10637, 10640. ITC responded by amending the claim to also recite “in a first state where said probe tip is driven in contact with said window with a first force.” J.A. 10648–49, 10653–56.
Integrated Tech. at *5.
Narrowing Amendment Presumably Falls under FestoAs an initial matter, we agree with Rudolph that prosecution history estoppel presumptively applies because the amendment narrowed the scope of the original claim in response to patentability rejections. By its plain language, the amendment added that there must be two different forces that drive the probe tip in contact with the viewing window in two separate states. Accordingly, we hold that ITC surrendered the territory between the original and issued claims, including the equivalent.
Id. at *7.
Exception: (i) Tangential Relation
Legal StandardThe tangential relation exception is “very narrow.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 480 F.3d 1335, 1342 (Fed. Cir. 2007). We ask “whether the reason for the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1369 (Fed. Cir. 2003) (en banc). “[A]n amendment made to avoid prior art that contains the equivalent in question is not tangential.” Chimie, 402 F.3d at 1383 (quoting Festo, 344 F.3d at 1369). “It does not follow, however, that equivalents not within the prior art must be tangential to the amendment.” Id. The tangential relation inquiry “focuses on the patentee’s objectively apparent reason for the narrowing amendment,” which “should be discernible from the prosecution history record.” Festo, 344 F.3d at 1369 (internal citations omitted).
Integrated Tech. at *7.
No Tangential Relation when the narrowing amendment was purposely related to the equivalent
Here, a tangential rationale for the amendment is not objectively apparent from the prosecution history. As the Examiner observed when rejecting the original claim, Sato discloses “a surface contacted by a probe.” J.A. 10640. It may be that ITC did not need to surrender a lack of physical contact between the probe tip and window in either state to overcome Sato. The dispositive fact is that ITC chose to do so.
Id. at *8.
In response to the Examiner’s patentability rejections, ITC explained that the invention generally included a preferred embodiment in which “a video camera . . . inspects the position of each probe tip as the probes are engaged in contact with the flat surface of a window.” J.A. 10652 (emphasis added). It also stated that, “[i]n another embodiment, the video camera provides a digital image of a probe contacting the surface of the window in [a first and second state] where the probe tip is driven in contact [with two different forces].” Id. (emphases added). ITC expressly stated that the prior art did not “teach or suggest such features,” without limiting which features it meant. J.A. 10653.
Id. at *8.
Exception: (ii) Unforseeability
Legal StandardThe patentee may rebut the application of prosecution history estoppel by establishing that the equivalent would have been objectively unforeseeable to one of ordinary skill in the art at the time of the amendment. Festo, 344 F.3d at 1369; Honeywell Int’l, Inc. v. Hamilton Sundstrand Corp., 523 F.3d 1304, 1313 (Fed. Cir. 2008). Technology developed after an amendment is not necessarily objectively unforeseeable. Festo, 344 F.3d at 1369.
Integrated Tech. at *9.
Surrendered Subject Matter was Forseeable at the Time of AmendmentWe agree with Rudolph that ITC has not proven that the equivalent was objectively unforeseeable. The no-touch products obtain an image in a first state when the probe tip is five microns above the viewing window, and in a second state when the probe tip touches the window. Accordingly, the no-touch products literally satisfy the original claim’s limitation of “a window with a flat surface contacted by said probe tip.” When the patentee “originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter.” Festo, 535 U.S. at 733–34. That principle controls in this case regardless of when Rudolph developed its no-touch products.
Id. at *9.
Conclusion
We thus reverse the denial of Rudolph’s motion for JMOL that its accused no-touch products do not infringe under the doctrine of equivalents.
Integrated Tech. at *10.
 
 
Editor's Note
The court also briefly discussed damages and laches. For further reading click here.
 
 
Image Attribution Statement: Pascal Adant, "Les Cones," available under a Creative Commons Attribution-Share Alike 3.0 Unported license, http://commons.wikimedia.org/wiki/File:C%C3%B4nes.jpg (Last visited Nov. 4, 2013). 
 
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