Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
See also Judge Michel’s opinion concurring-in-part and dissenting-in-part in
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 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.
(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., Ltd., 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
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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