Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
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, 988 F.2d 1165, 1174, 26 USPQ2d 1018, 1025 (Fed.
Cir. 1993).
See also Judge Michel’s opinion concurring-in-part and dissenting-in-part in 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.,):
[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.
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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