Appeal 2005-0801
Application 09/848,628
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
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