Docket No. 2012-1593, -1618
RADER, CLEVENGER, MOORE
November 4, 2013
Brief summary: Decision of infringement under DOE was reversed due to prosecution history estoppel (narrowing amendment, no defenses (Festo)).
Summary: Rudolph appealed DC judgment of infringement (non-willful and willful, $15.3 million damages) under the doctrine of equivalents (DOE) and denial of its JMOL motion that prosecution history estoppel (PHE) bars the application of the DOE by ITC with respect to U.S. Pat. No. 6,118,894 (relating to inspection equipment for probe cards used to test chips on semiconductors). Under Festo (US 2002), PHE “presumptively applies when the applicant made a narrowing claim amendment related to patentability” but may be rebutted by showing “[t]he equivalent may have been unforeseeable at the time of the application”, “the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question”, or “some other reason suggesting that the patentee could not reasonably be expected to have described the [equivalent]”. The DC held that PHE did not apply to ITC’s amendment in response to rejections under 35 USC § 112, second paragraph and 35 USC § 102(b) because “the original and issued claims ‘both required contact between the plate and the probe tip’”. The opinion, however, first concluded that the amendment in fact was both narrowing under Festo and made in response to patentability rejections. It then explained that the “very narrow” tangential relation exception did not apply because “a tangential rationale…is not objectively apparent from the prosecution history” (“It may be that ITC did not need to surrender a lack of physical contact between the probe tip and window in either state to overcome Sato. The dispositive fact is that ITC chose to do so… ITC’s representations convey to the public that it was relying on physical contact to overcome the prior art. The public is entitled to rely on those representations.”) The opinion further explained that ITC did not prove the surrendered subject matter (the equivalent to Rudolph’s product) was not “objectively unforeseeable” because it was originally claimed (“When the patentee ‘originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter.” (citing Festo)). The third rebuttal defense (“some other reason”) was not addressed. Rudolph also argued that lost profits should not have been awarded but award was upheld (“The jury could have relied on the two-supplier theory….”) The opinion also supported Rudolph’s position that the case was not exceptional under 35 USC § 285. And, finally, it was determined that that there was no unreasonable delay by ITC in filing its case and that laches therefore did not apply.