Appeal No. 2005-0642
Application No. 09/568,278
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):
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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