Appeal No. 2005-0841
Application No. 08/230,083
62 S. Ct. 513 ("By the amendment [the patentee]
recognized and emphasized the difference between the
two phrases and proclaimed his abandonment of all that
is embraced in that difference"). There are some
cases, however, where the amendment cannot reasonably
be viewed as surrendering a particular equivalent. The
equivalent may have been unforeseeable at the time of
the application; the rationale underlying the amendment
may bear no more than a tangential relation to the
equivalent in question; or there may be some other
reason suggesting that the patentee could not
reasonably be expected to have described the
insubstantial substitute in question. In those cases
the patentee can overcome the presumption that
prosecution history estoppel bars a finding of
equivalence (emphasis added).
***
When the patentee has chosen to narrow a claim, courts
may presume the amended text was composed with
awareness of this rule and that the territory
surrendered is not an equivalent of the territory
claimed. In those instances, however, the patentee
still might rebut the presumption that estoppel bars a
claim of equivalence. The patentee must show that at
the time of the amendment one skilled in the art could
not reasonably be expected to have drafted a claim that
would have literally encompassed the alleged equivalent
(emphasis added).
The same policy considerations that prevent a patentee from
urging equivalents within what the Supreme Court refers to as
"surrendered territory" should prima facie prohibit the patentee
from being able to claim subject matter within the surrendered
territory in reissue. Accordingly, the "surrendered subject
matter" that may not be recaptured through reissue should be
presumed to include subject matter broader than the patent claims
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