Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
On remand, the Federal Circuit notes (Id. at 1367-70, 68 USPQ2d at
1326-29):
[W]e reinstate our earlier holding that a patentee’s rebuttal of
the Warner-Jenkinson presumption is restricted to the evidence
in the prosecution history record. Festo [I], 234 F.3d at 586 &
n.6; see also Pioneer Magnetics, 330 F.3d at 1356 (stating that
only the prosecution history record may be considered in
determining whether a patentee has overcome the Warner-
Jenkinson presumption, so as not to undermine the public
notice function served by that record). If the patentee
successfully establishes that the amendment was not for a
reason of patentability, then prosecution history estoppel does
not apply.
***
. . . By its very nature, objective unforeseeability depends on
underlying factual issues relating to, for example, the state of
the art and the understanding of a hypothetical person of
ordinary skill in the art at the time of the amendment.
Therefore, in determining whether an alleged equivalent would
have been unforeseeable, a district court may hear expert
testimony and consider other extrinsic evidence relating to the
relevant factual inquiries.
. . . As we have held in the Warner-Jenkinson context, that
reason should be discernible from the prosecution history
record, if the public notice function of a patent and its
prosecution history is to have significance. See id. at 1356
(“Only the public record of the patent prosecution, the
prosecution history, can be a basis for [the reason for the
amendment to the claim]. Otherwise, the public notice function
of the patent record would be undermined.”); Festo [I], 234
F.3d at 586 (“In order to give due deference to public notice
considerations under the Warner-Jenkinson framework, a patent
holder seeking to establish the reason for an amendment must
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