Prosecution History E’stop’pel!

This post was first published on 3rd September, 2014.

All of us have experienced times when things don’t work the way we want them to when we really need them to. Exactly the same way, extended protection given to the patentee under the Doctrine of Equivalents (DOE) doesn’t always help you when you need it the most. Many a time, the application has to be amended in order to accommodate the Patent Law requirements, which is called the Prosecution History or File-Wrapper. Prosecution History Estoppel is an exception to the general rule of DOE (after the Festo case) which says that “where claims were amended for the purpose of patentability, then such applicant cannot claim his rights under DOE.”

In a very interesting case of FELIX v. AMERICAN HONDA MOTOR COMPANY INC, [562 F.3d 1167 (Fed. Cir. 2009)] the patentee had to lose his case because of Prosecution History Estoppel. Mark. D. Felix brought an action against American Honda Motor Company alleging that the In-Bed Trunk of Honda’s Ridgeline truck infringed his Patent No. 6,155,625.

Felix made an application to patent an arrangement of storage compartment under a trunk bed which could be accessed through an opening in the bed. He had claimed, amongst others, a weather-tight gasket mounted on a lid assembly, engaging the lid in its closed position. This claim was dependent on Claim 1 which described the storage compartment. There was opposition from the Patent Office regarding these claims being obvious. Finally his amended claim spoke of “…a weathertight gasket mounted on flange…”

Felix contended that the In-Bed trunk of Honda’s truck infringed his patent under the Doctrine of Equivalents. In particular, the accused Honda truck bed has a “weather-tight gasket” mounted on the lid rather than on the flange as claimed in the Felix’s patent. The Court observed that when the original claims were rejected, Felix made amendments. When those amendments were also opposed, Felix made further amendments just to overcome objections. In the process, Felix made a series of amendments to his claims wherein he cancelled certain broad independent claims and re-wrote dependent claims into independent form to satisfy the patentability criteria. The Court held that:

“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.”

The Court relied on the decision in Festo’s case where the Court held that: “When the patentee responds to the rejection by narrowing his claims, this prosecution history estops him from later arguing that the subject matter covered by the original, broader claim was nothing more than an equivalent.”

The Federal Circuit Court held that Honda did not literally infringe Felix’s patent and that Felix’s claim under DOE was foreclosed by Prosecution History Estoppel. American Honda could save itself from the liability due to careful examination of the Prosecution History of Felix’s patent. A patent infringement defendant can potentially save itself from liability by identifying this issue at the outset of litigation. And patent applicants have to be careful in responding to an office action / communication during the course of patent prosecution in view of potential consequences.

Remember, what you claim is what you get. So, claim well, gain well!

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