Appeal No. 2005-0841
Application No. 08/230,083
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.
(9)
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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