Cite as: 535 U. S. 722 (2002)
Syllabus
amendment was not made for a reason that would give rise to estoppel. Id., at 33. Similarly, the patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question. As the author of the claim language, his decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim. Exhibit Supply, supra, at 136-137. However, in cases in which the amendment cannot reasonably be viewed as surrendering a particular equivalent—e. g., where the equivalent was unforeseeable at the time of the application or the rationale underlying the amendment bears but a tangential relation to the equivalent—the patentee can rebut the presumption that prosecution history estoppel bars a finding of equivalence by showing that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent. Pp. 737-741.
(e) Whether Festo has rebutted the presumptions that estoppel applies and that the equivalents at issue have been surrendered should be determined in the first instance by further proceedings below. Pp. 741-742.
234 F. 3d 558, vacated and remanded.
Kennedy, J., delivered the opinion for a unanimous Court.
Robert H. Bork argued the cause for petitioner. With him on the briefs were Charles R. Hoffmann, Gerald T. Bodner, Glenn T. Henneberger, Anthony E. Bennett, Andrew L. Frey, Donald M. Falk, and Robert L. Bronston.
Deputy Solicitor General Wallace argued the cause for the United States as amicus curiae. With him on the brief were Solicitor General Olson, Acting Assistant Attorney General Schiffer, Jeffrey P. Minear, Vito J. DiPietro, Anthony J. Steinmeyer, Howard S. Scher, and Linda Moncys Isacson.
Arthur I. Neustadt argued the cause for respondents. With him on the brief were Charles L. Gholz, Robert T. Pous, and James B. Lampert.*
*Briefs of amici curiae urging reversal were filed for the American Bar Association by Robert E. Hirshon, E. Anthony Figg, Minaksi Bhatt, and Robert H. Cameron; for the American Intellectual Property Law Association by Lawrence M. Sung and Janice M. Mueller; for ASTA Medica
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