Appeal 2006-1068
Reissue Application 08/425,766
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.
(10)
Relevance of prosecution history
“Surrendered subject matter” is defined in connection with prosecution
history estoppel in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
U.S. 722, 733-34, 122 S. Ct. 1831, 1838, 62 USPQ2d 1705, 1710-11 (2002) (Festo
II):
The doctrine of equivalents allows the patentee to claim those
insubstantial alterations that were not captured in drafting the original
patent claim but which could be created through trivial changes.
When, however, the patentee originally claimed the subject matter
alleged to infringe but then narrowed the claim in response to a
rejection, he may not argue that the surrendered territory comprised
unforeseen subject matter that should be deemed equivalent to the
literal claims of the issued patent. On the contrary, “[b]y the
amendment [the patentee] recognized and emphasized the difference
between the two phrases[,] . . . and [t]he difference which [the
patentee] thus disclaimed must be regarded as material.” Exhibit
Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-37, 62 S. Ct. 513,
518-19 [52 USPQ 275, 279-80] (1942).
Festo II goes on to comment, 535 U.S. at 737-41, 122 S. Ct. at 1840-
35
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