Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
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, 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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