Energy Transportation Group, Inc. v. William Demant Holding A/S et al.


Docket No. 2011-1487, -1488, -1489

RADER, PLAGER, LINN
October 12, 2012

Brief summary: Disclosure of a single embodiment not read into claims “unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Under DOE analysis, “[s]ilence does not overcome the presumption” of subject matter surrender.

Summary: Demant appealed DC denial of a new trial after finding ETG’s U.S. Pat. No. 4,731,850 infringed. ETG cross-appealed DC grant of JMOL of noninfringement of its U.S. Pat. No. 4,879,749 because prosecution history estoppel (PHE) barred the jury finding under the doctrine of equivalents (DOE). The patents relate to programmable hearing aids, with “programmable” being a disputed term. Demant argued that that the ‘850 claims should have been defined to require programming to take place externally or be “fixed” but the FC panel disagreed based on the defendant’s expert testimony and the specification (citing Innova, FC 2004 (“[E]ven where a patent describes only a single embodiment, claims will not be read restrictively unless the patentee has demon- strated a clear intention to limit the claim scope….”)) The FC panel disagreed with Demant that certain ‘850 claims lacked written description based on the specification and Demant’s expert testimony which declared that “[no]body but a red faced liar could . . . say the ’850 [Patent] does not contemplate adaptive filtering” (citing Ariad, FC 2010). The FC panel also concluded that the jury properly “assessed the credibility of both sides’ arguments” and concluded no anticipation. The jury also found certain ‘850 claims to be infringed under DOE (Sage Prods., FC 1997; Crown Packaging, FC 2009). The FC panel agreed with this conclusion (Hughes Aircraft, FC 1998 (infringement under the doctrine of equivalents where advances in computer technology occurring after the patents issued allowed changes in the nature and location of claimed calculations); Wilson Sporting Goods, US 1993 (“[A] patentee should not be able to obtain, under the doctrine of equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims” (not found here) (see also Streamfeeder, FC 1999)) but also found literal infringement. The DC denial of Demant’s request for a new trial regarding damages was also affirmed (“25% rule” considered). ETG’s appeal regarding the DC grant of JMOL of noninfringement of the ‘749 patent under DOE was affirmed because, the FC panel determined, “the claim limitation at issue was added in response to a rejection of closely related claims, and provides no other explanation for the limitation” (Festo, FC 2008 (“If the prosecution history reveals no reason for the narrowing amendment, the presumption is not rebutted. . . . Silence does not overcome the presumption.”); Stryker, FC 2005 (Prosecution history estoppel bars application of the doctrine of equivalents even wher

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