Search the Archives           Subscribe           About this News Service           Reader Comments

Archived updates for Wednesday, April 15, 2009

Gasket on Flange Not Equivalent to Gasket on Lid

In Felix v. American Honda Motor Co. (April 10, 2009) the Federal Circuit held that the patent was not literally infringed because the accused product mounted a gasket on the automobile trunk lid, not on a flange as claimed in the patent. The patent was not infringed under the doctrine of equivalents because Felix surrendered claim scope with amendments made during USPTO prosecution.

According to the opinion by Circuit Judge Linn,
On Honda’s second motion for summary judgment, the district court held that Felix was precluded under the doctrine of prosecution history estoppel from arguing that the In-Bed Trunk infringed the gasket limitation by equivalents. Equivalents Op. at 7. Felix argues that he rebutted the presumption of prosecution history estoppel by showing that the amendment giving rise to the estoppel was tangential to the equivalent in question—namely, a gasket mounted on the lid, rather than the flange of the channel. . . .

. . . Amendment-based prosecution history estoppel “arises when an amendment is made to secure the patent and the amendment narrows the patent’s scope.” Festo, 535 U.S. at 736. “A patentee’s 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.” Id. at 740. But the patentee may rebut this presumption by “demonstrat[ing] that the alleged equivalent would have been unforeseeable at the time of the narrowing amendment, that the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question, or that there was ‘some other reason’ suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., . . .

1. Presumption of Surrender

We first consider which amendment—if any—gave rise to a presumption of surrender of claim scope encompassing the equivalent at it issue. The limitation at issue here is the gasket limitation. That limitation was not contained in original independent claim 1, but was present in dependent claim 7. In Felix’s first amendment on September 10, 1999, he cancelled original claim 1 and rewrote original dependent claim 7 in independent form as claim 14 to contain all of the limitations of claims 1 and 7. J.A. 490-91. It was this first amendment that had the effect of adding the channel and gasket limitations of dependent claim 7 to the broader claim that was cancelled. “[T]he rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel.” Honeywell, 370 F.3d at 1134. Thus, Felix’s decision in the first amendment to cancel original claim 1 and to rewrite original claim 7 in independent form as claim 14 gave rise to a presumption of surrender.

The interesting wrinkle in this case is that even after Felix cancelled original independent claim 1 and rewrote original dependent claim 7 in independent form, the examiner still did not allow the rewritten dependent claim. In other words, even though Felix amended the claim and thereby narrowed its scope in an effort to secure allowance, that effort did not succeed.5 It was only after claim 8 was rewritten in independent form to include the limitations of claims 1, 7, and 8 that the claim was allowed.

The fact that the first amendment did not succeed and that a further amendment was required to place the claim in allowable form, however, is of no consequence as to the estoppel. It is the patentee’s response to a rejection—not the examiner’s ultimate allowance of a claim—that gives rise to prosecution history estoppel. . . .We therefore hold that the presumption of prosecution history estoppel attaches when a patentee cancels an independent claim and rewrites a dependent claim in independent form for reasons related to patentability, even if the amendment alone does not succeed in placing the claim in condition for allowance.

It is also immaterial in this case that the cancellation and amendment were to application claims 1, 7, and 14—rather than to application claims 8 and 16, which resulted in the asserted claim. The presumption of surrender “applies to all claims containing the [added] [l]imitation, regardless of whether the claim was, or was not, amended during prosecution.” Deering, 346 F.3d at 1326. . . . To hold otherwise would be to exalt form over substance and distort the logic of this jurisprudence, which serves as an effective and useful guide to the understanding of patent claims. The fact that the [the limitation in question] was not itself amended during prosecution does not mean that it can be extended by the doctrine of equivalents to cover the precise subject matter that was relinquished in order to obtain allowance of [another claim].”). Thus, in this case, the cancellation of original independent claim 1 coupled with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a presumption of surrender applicable to all limitations, found in any of the claims of the ’625 patent, that correspond to the limitations of claim 7.

We next turn to the scope of the presumptive surrender. “[W]hen a claim is rewritten from dependent into independent form and the original independent claim is cancelled . . . the surrendered subject matter is defined by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation. Equivalents are presumptively not available with respect to that added limitation.” Honeywell, 370 F.3d at 1144. Equivalents are therefore presumptively not available as to any of the subject matter added in Felix’s first amendment. It is immaterial that Felix chose to add both the channel and the gasket limitations, rather than just one. The resulting estoppel attaches to each added limitation. See Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir. 2008) (“It is not relevant to the determination of the scope of the surrender that the applicant did not need to amend the claims [as they were amended] in order to overcome the prior art.”) . . . Felix is therefore presumptively barred from relying on the doctrine of equivalents to prove that Honda’s In-Bed Trunk meets the gasket limitation—one of the two limitations added by amendment.

2. Tangentiality

Felix argues that he has rebutted the presumption of prosecution history estoppel as to the gasket limitation, because “the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question.” Felix argues that the first amendment “was made because the applicant thought the prior art lacked a channel,” not because of the presence or position of a gasket. Appellant’s Br. at 34. . . .

Felix relies on the language in his argument to the examiner that “the cited references do not show the channel of Claim 7, which is formed at the rim of the bed opening, in combination with the other structure of Claims 1 and 7.” J.A. 494. We reject Felix’s argument for two reasons. First, the cited language in Felix’s argument to the examiner expressly refers not only to the “channel of Claim 7” but also to the “other structure” of the claims. It is therefore not “objectively apparent” from this argument that the channel was the only reason for cancelling original claim 1 and rewriting dependent claim 7 in independent form, as Felix argues. Second, the cited language does not explain the entire amendment. If Felix had intended only to add a channel and not add a gasket, he could easily have simply amended original claim 1 to add limitation (e) and not limitation (f). Thus, Felix has identified no explanation in the prosecution history for the addition of the gasket limitation, and Felix therefore cannot meet his burden to show that the rationale for adding the gasket limitation was tangential to the presence and position of a gasket.

. . . Because we conclude that Felix is barred by the doctrine of prosecution history estoppel from relying on the doctrine of equivalents to prove that the accused In-Bed Trunk meets the gasket limitation, we also affirm the district court’s summary judgment of no infringement by equivalents.

. . . We agree with the district court that prosecution history estoppel bars Felix from relying on the doctrine of equivalents to show that Honda’s In-Bed Trunk meets the gasket limitation—“a weathertight gasket mounted on said flange and engaging said lid in its closed position.” We therefore affirm the district court’s summary judgment of no infringement under the doctrine of equivalents.
    (17)comment(s)     translate     More Updates     Send    


Blogger Unknown said...

Blogs are so informative where we get lots of information on any topic. Nice job keep it up!!

Dissertation Abstract

December 11, 2009 5:26 AM  
Anonymous Anonymous said...

puma mens shoes
puma shoes
puma speed
nike shoes
nike air
nike air shoes
nike air max 90
nike air max 95
nike air max tn
nike air rift
nike shox r4
nike air max 360
nike shox nz
puma cat
air max trainers
mens nike air max
sports shoes
nike air rifts
nike air rift trainer
nike air
nike shoes air max
nike shoes shox
air shoes
Lucyliu IS Lucyliu
nike shoe cart
puma future
cheap puma
nike rift
jeans shop
diesel jeans
levis jeans
nike rift shoes
cheap nike air rifts
bape shoes

January 06, 2010 9:58 PM  
Blogger Dissertation Writing service said...

This kind of information is very limited on internet. Nice to find the post related to my searching criteria. Your updated and informative post will be appreciated by blog loving people.

UK Dissertations

May 08, 2010 8:33 AM  
Anonymous dissertation proposal said...

Thank you for sharing this information, The information was very helpful and saved a lot of my time, Thank you for providing this information

May 03, 2013 8:47 AM  
Blogger Unknown said...

kenapa keputihan tidak normal dan mengeluarkan nanah obat kutil herbal di kemaluan cara menghilangkan kutil kemaluan secara alami tips menghindari kutil kelamin tips menghilangkan kencing nanah cara mengobati kelamin keluar nanah obat alam tradisional kencing bernanah obat kutil di kemaluan pria obat kemaluan keluar nanah Obat Ambeien Ampuh Tradisional Resep Obat Wasir obat alami untuk gejala wasir Mengobati Wasir Secara Alami Obat ampuh atasi wasir Obat herbal efektif menyembuhkan wasir Obat untuk kelamin laki laki keluar cairan nanah Obat kemaluan keluar nanah atau gonore Obat cairan nanah keluar dari alat kelamin Mengapa kencing sakit dan keluar cairan nanah Mengapa kencing perih dan keluar nanah Mengapa nanah keluar dari kelamin Obat untuk kutil di sekitar bibir vagina Obat kencing nanah manjur menghilangkan benjolan kutil di vagina wanita

July 01, 2015 5:23 PM  
Blogger raybanoutlet001 said...

jordan 4
ugg boots
coach outlet
cheap oakley sunglasses
toms shoes
oakley sunglasses
ugg outlet
ugg boots
true religion outlet
ugg boots

July 08, 2017 2:32 AM  
Blogger adidas nmd said...

gucci outlet
gucci borse
hugo boss outlet
instyler max 2
kate spade outlet
kate spade outlet
kate spade handbags
kate spade handbags
kate spade handbags
longchamp outlet

November 15, 2017 3:06 AM  
Blogger qqqqqq said...

adidas nmd
bape hoodie
curry 3 shoes
red bottom shoes
longchamp bags
converse outlet
supreme clothing
longchamp handbags
air max 90
stephen curry shoes

January 23, 2018 2:59 AM  
Blogger Unknown said...

polo ralph lauren
fitflops sale
salomon shoes
ray ban sunglasses
chrome hearts
canada goose
nike factory outlet
ray ban sunglasses
los angeles lakers

April 09, 2018 3:35 AM  
Blogger Unknown said...

burberry outlet
canada goose outlet
adidas soccer shoes
kate spade outlet
calvin klein jeans
kate spade outlet
10 deep clothing
michael kors outlet
cavaliers jerseys
canada goose jackets

May 31, 2018 10:50 PM  
Blogger Unknown said...


nuggets jerseys
cheap nhl jerseys
belstaff jackets
toms shoes
ugg outlet
adidas crazy
lacoste polo shirts
fitflops outlet
ralph lauren pas cher
kappa clothing

July 12, 2018 5:36 AM  
Blogger Unknown said...

0728jejeLe jardin soldes nike air femme a des statues merveilleuses, nike homme destockage des sentiers de gravier, des cdiscount basket air jordan homme promenades à basket running asics femme pas cher poney, aire de jeux de nike femme basse air trampoline, terrains de jeux nike air force one grise homme et plus encore. Les chaussures air jordan pas cher pour fille chaussures de travail nike air force one homme solde peuvent présenter des soucis nike cortez femme rose pour les concepteurs de chaussures. nike homme

July 30, 2018 1:59 AM  
Blogger Unknown said...

adidas superstar
coach outlet online
canada goose outlet
michael kors outlet online
uggs outlet
moncler online
manolo blahnik
coach outlet
canada goose jackets
cheap jordans

August 09, 2018 4:35 AM  
Blogger miki said...

0814jejeasics gel nimbus 17 homme La colonne adidas zx flux homme courir à talons biseautés assure des touchers lisses et durables. Alors que Adidas Zx Flux Femme Porte la fleur est pantropique, les Philippines ont cependant Air Jordan 3 Enfants considéré la fleur comme leurs quelques bouquets air jordan future low noir et rouge indigènes, ainsi que l'ylang-ylang et les fleurs de nike air jordan 1 mid homme waling-waling. Juste une des grandes choses au sujet du basket pas cher nike air max 95 Jupiter Jack est qu'il n'est pas installé chaussure nike homme cortez dans votre véhicule? plutôt il est vraiment assez petit asics gel lyte 5 bleu rouge pour que vous puissiez le porter dans votre asics gel fuji attack dames poche.

August 14, 2018 1:40 AM  
Blogger Unknown said...

A very informative post and thanks for sharing it with the community!

Rubber gaskets manufacturer

Ring type joint gasket

Insulation kit Gaskets

Flange Gaskets for High pressure

Metal Gaskets

February 09, 2019 5:12 AM  
Blogger yanmaneee said...

goyard bags
lebron 13
air max 2019
adidas yeezy boost
supreme shirt
coach outlet store
curry 5 shoes
timberland boots
nike air max 90

April 26, 2019 11:11 PM  
Blogger HẰNG said...

I like this post because it contains a lot of useful information to read, maybe everyone will like me. I hope this post of yours will be more appreciated by it really excellent, i enjoyed it, thanks for posting it.
abcya online, jogo io online, friv Games online 2019, cá koi mini

August 07, 2019 10:42 AM  

Post a Comment

<< Home