Appeal No. 2004-0659
Application No. 09/111,978
Hester argues that an analogy cannot be made with prosecution
history estoppel because the reissue procedure and prosecution history
estoppel are the antithesis of one another--reissue allows an expansion of
patent rights whereas prosecution history estoppel is limiting. However,
Hester’s argument is unpersuasive. The analogy is not to the broadening
aspect of reissue. Rather, the analogy is with the recapture rule, which
restricts the permissible range of expansion through reissue just as
prosecution history estoppel restricts the permissible range of equivalents
under the doctrine of equivalents.
This court earlier concluded that prosecution history estoppel can
arise by way of unmistakable assertions made to the Patent Office in
support of patentability, just as it can arise by way of amendments to avoid
prior art. See, e.g., Texas Instruments, Inc. v. International Trade
Comm’n, 998 F.2d 1165, 1174, 26 USPQ2d 1018, 1025 (Fed. Cir. 1993).
See also Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 602, 56
USPQ2d 1865, 1899 (Fed. Cir. 2000) (Festo I), vacated and remanded, 535 U.S. 722,
122 S. Ct. 1831, 62 USPQ2d 1705 (2002) (Festo II)6 (Michel, J., concurring-in-part and
dissenting-in-part):
[T]he law of prosecution history estoppel has developed with equal
applicability to reissue patents and original patents whose claims were
amended during prosecution. By at least 1879, the Supreme Court
recognized that the process of obtaining a reissue patent precluded the
patentee from recapturing that which he had disclaimed (i.e., surrendered),
through the reissuance process.
fairness to the public must also be considered. As stated in Mentor, "the reissue
statement cannot be construed in such a way that competitors, properly relying on
prosecution history, become patent infringers when they do so." 998 F.2d at 996, 27
USPQ2d at 1525.
6 The “Festo” convention used in this opinion is:
Festo I is the original in banc decision of the Federal Circuit.
Festo II is the decision of the Supreme Court.
Festo III is the decision of the Federal Circuit on remand.
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