Appeal No. 2004-0659
Application No. 09/111,978
history record. Festo [I], 234 F.3d at 586 & n.6; see also Pioneer
Magnetics, 330 F.3d at 1356 (stating that only the prosecution history
record may be considered in determining whether a patentee has overcome
the Warner-Jenkinson presumption, so as not to undermine the public
notice function served by that record). If the patentee successfully
establishes that the amendment was not for a reason of patentability, then
prosecution history estoppel does not apply.
***
. . . By its very nature, objective unforeseeability depends on underlying
factual issues relating to, for example, the state of the art and the
understanding of a hypothetical person of ordinary skill in the art at the
time of the amendment. Therefore, in determining whether an alleged
equivalent would have been unforeseeable, a district court may hear expert
testimony and consider other extrinsic evidence relating to the relevant
factual inquiries.
. . . As we have held in the Warner-Jenkinson context, that reason should
be discernible from the prosecution history record, if the public notice
function of a patent and its prosecution history is to have significance. See
id. at 1356 (“Only the public record of the patent prosecution, the
prosecution history, can be a basis for [the reason for the amendment to
the claim]. Otherwise, the public notice function of the patent record
would be undermined.”); Festo [I], 234 F.3d at 586 (“In order to give due
deference to public notice considerations under the Warner-Jenkinson
framework, a patent holder seeking to establish the reason for an
amendment must base his arguments solely upon the public record of the
patent’s prosecution, i.e., the patent’s prosecution history. To hold
otherwise--that is, to allow a patent holder to rely on evidence not in the
public record to establish a reason for an amendment--would undermine
the public notice function of the patent record.”). Moreover, whether an
amendment was merely tangential to an alleged equivalent necessarily
requires focus on the context in which the amendment was made; hence
the resort to the prosecution history. Thus, whether the patentee has
established a merely tangential reason for a narrowing amendment is for
the court to determine from the prosecution history record without the
introduction of additional evidence, except, when necessary, testimony
from those skilled in the art as to the interpretation of that record.
. . . When at all possible, determination of the third rebuttal criterion
should also be limited to the prosecution history record. . . . We need not
decide now what evidence outside the prosecution history record, if any,
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