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