Subject: Day 7 Self Study Course:  July 31, 2009 (Fri)  


summarized by Tatsuo Yabe


Hi All, how are you doing?


Hope you are doing all right!


About Yabe-juku reading assignment for the July 31, 2009 there were some voices that the case laws were tough to digest.  If you feel the case laws, Lockheed and Festo are tough to digest, I believe you are on the right track.  If you do not think this way, then I think you are extremely smart or you are more or less just surfing on these case laws.


I would suggest try understanding the flow of the three case laws without trying to deeply understand the technologies and the rationales to reach the decision.  In order to ease your reading, I am happy to provide you with my summary of the assigned readings, pgs 432 to 466 for your reference:




Initially, the patentee has the burden of proving infringement by preponderous evidence. Once it is done, then the accused infringer may want to set forth a counter-argument based on the following limitations against the finding of infringement:


(A) All element Rule; -- Lockeed v. SSL (Fed. Cir. 2003)

(B) Prosecution history Estoppel; 

    -- W-J ( Sup Ct. 1997); Festo Sup Ct  (2002)

    -- B1) Rebutting PHE by "unforseeability" -- Festo (Fed Cir 2007)

    -- B2) Rebutting PHE by "tangential relation"; -- Insituform v. Cat (Fed Cir 2004)

(C) Prior Art preclusion; -- Wilson Sporting v. David (Fed. Cir. 1990)

(D) Disclosed but unclaimed subject matter; -- Johnson & Johnston v. R.E. (Fed Cir. en banc 2002)

    -- YBM Magnex v. ITC (Fed Cir. 1998); Maxwell v. Baker (Fed.Cir. 1996)

(E) Advantage rule/Spec based estoppel; -- Vehicular Tech v. Titan Wheel (Fed. Cir. 1998)

(F) Limited prior use rights. -- 35USC273 (1999) only for B-Model Patents




For July 31 (Fri), we will be covering the defense by the accused infringer based on the above (1) and (2) limitations.


(A) All Element Rule:


This rule was first embraced by Pennwalt (Fed Cir en banc decision: 1987) and confirmed by Warner-Jenkinson (Sup Court: 1997).


Lockeed Martin Corp. v. Space System Inc. (Fed Cir. 2003)


This case has been remanded to the Fed Cir because of the Supreme Court's Decision on Festo case. 


Lockheed is the assignee of USP'772 about an apparatus and method for steering a satellite.  SSL is the accused infringer.


The element of claim 1 (USP'772) in question has a term, expressed in "means plus function" form.


How the analysis was done?  Do you remember?  see Chiuminatta decision (1998)!


At Markman hearing, intrinsic evidence (Phillips v. AWH: 2005) was primarily reviewed to find out the corresponding structure and equivalents thereof with respect to the means plus function element for the literal infringement analysis.  For the "equivalent" analysis under 112(6), the test is to ask whether

that the accused device has the element which performs the identical function in a substantially

the same way to achieve the substantially the same result as the claimed element.


For the DOE analysis, the test was to see if the element of the accused device performs substantially the same function in substantially the same way to achieve substantially the same result as that of the claimed element. (Graver Tank 1950 and W-J 1997)


It was found out that the accused device (SSL) in question did not have an element corresponding to the means plus function term of claim 1 of USP'772 because the element in question (SSL) does not have a sign generator and wheel electronics whose amplitude varies sinusoidally.  In other words, the element in question (SSL) did not pass through zero (no meeting the claimed element "varies sinusoidarly")


Under the all element rule, there can be no infringement under DOE if even one limitation of a claim or its equivalent is not present in the accused device.


Practical Note:


Claim                Accused device

a)....                  a) ....

b) ...                  b) ...

c) ...                  c)....

d) ...                   -missing


No matter how insignificant the element (d) is, no infringement under DOE.




1. What is an element?

- Corning Glass (Fed Cir 1989) denied the Sumitomo's argument that every term in the claim was an element for the purpose of the all element rule. (however, there are some other case laws that do not quite agree...!)


2. The specific exclusion rule:

- In Dolly v. Spalding (Fed Cir 1994), the patentee cannot argue that her claim covers a structure that is pacifically excluded by the claims under the DOE.


(Ex) A portable adjustable child play chair with

    a) a stable, rigid frame;

    b) a seat panel; and

    c) a back panel.


The accused device which had a seat and a back panel which fit together to form a stable rigid frame was not equivalent.


3. Pioneering inventions;

do not worry about it!


4. Later-developed technologies:

Sage Prod v. Devon (Fed Cir 1997), Does this mean the all elements rule can be ignored when after-arising technologies no longer need to include one of the claimed limitations in order to practice the invention?






In W-J (1997), the Sup Court established the following rules:


(1) If no reason for amendment is given, there arises the presumption that the amendment was done for the reason for patentability (W-J: 1997). Then PHE (no DOE applies) arises.


(2) If the patentee successfully rebut the presumption, then PHE is not applied to the amended element.  --> possibility of application of DOE!


Festo Sup Ct (Festo VII 2002) says:


PHE arises when


(i) there is a narrowing amendment; and

(ii) the narrowing amendment is for the reason for patentability;


then PHE applies (no DOE applications)!


However, even if the above conditions (i) and (ii) are met, there is still possibility of rebutting the presumption (PHE):


(1) the equivalent in question was unforeseeable at the time of application;

(2) the equivalent in question bears a mere tangential relationship to the amendment; or

(3) some other reason that the patentee could not have reasonably be expected to have described the equivalent in question.


1. What is a narrowing amendment?


- adding a limitation to the claim or clarifying an existing limitation, that results in less claim coverage. For instance, "board" to -- a wooden board --.


- how about rewriting an existing dependent claim in independent form?

    (ex) bringing all the limitations of claim 1 into the existing dependent claim 2?

    - Under Honeywell v. Hamilton (Fed Cir 2004), doing so would constitute "a narrowing amendment".


2. What is the amendment for reasons related to patentability?


- when no explanation is given, then it is presumed that the amendment was done for the patentability reason (W-J: 1997).


- A reason related to patentability is not limited to amendments to avoid the prior art (102 and 103) but includes changes made to overcome 101 and 112 as well (Festo). Note W-J (1997) was not clear about this issue.


- However, a truly cosmetic amendment under 112 is excusable (Festo).


(EX) Change 'th' to --the-- or 'sad' to --said--.


- How about a voluntary amendment before receipt of the rejections?


- How about a broadening amendment?


(EX) Change 'a coil spring' to -- a spring --?

(EX) Change 'a steel plate' to -- a plate --?



Rebutting the Festo Presumption:


(1) Unforseeability:


Festo v. Shoketsu (Fed Cir 2007)


Festo: Patentee of USP4354125 (filed May 28, 1980 )

Shoketsu: Accused Infringer.


The case raises the question of whether an equivalent in question is foreseeable within the meaning of Festo Sup Ct. (Festo VII: 2002)?


Festo argues that the languages of Festo VIII (en banc 2003) says that the foreseeability must be determined in the context of the invention, i.e., the equivalent must be foreseeable under the F/W/R test at the time of the amendment.


Neither the Sup Ct (Festo VII 2002) decision nor Fed Cir Festo VIII (en banc 2003) in any way supports the Festo's theory (the above argument) based on the reasons (1), (2), (3) and (4) -- see pages Text 457 to 458.


Conclusion: Fed Cir concludes that use of an aluminum alloy sleeve was foreseeable at the time of amendment because the pertinent prior art disclosed a no-magnetizable sleeve.

Festo could have claimed use of a non-magnetizable sleeve but did not do so.  Accordingly, we find that the equivalent was surrendered by amendment.


Judge NEWMAN: dissenting.




Rebutting Festo Presumption:


(2) Tangential Relationship


Insituform Technologies v. Cat Contracting Inc. (Fed Cir 2004)


Patentee: Insituform ( England ) -- USP4366012

Accused Infringer: Cat Contracting Inc.


The issue is whether the amended claim (reciting "a window" in an impermeable outer layer of the tube) of Insituform encompasses a Cat's method which forms a multiple windows under DOE?  In other words, the added term "a window" invokes PHE (no DOE application)?


The patent relates to an underground pipe and  Claims of USP4366012 (Insituform) relates to a method for performing pipe repair without removing the damaged pipe from the ground.  The method involves installing a liner into the pipe.  Claim 1 claims a process for impregnating a flexible tube liner with resin prior to insertion of the liner into a damaged pipe.  The liner has an impermeable film on

the outside and a resin-absorbent, felt layer on the inside.  A vacuum is applied to the inside of the liner by cutting a window into the outer, impermeable firm, applying a cup (a vacuum cup) to the outside of the window and connecting the other end of the cup to a vacuum source. (see pg 462 for more details)


The accused product employs multiple cups over the resin.


The original claim 1 was rejected over Everson (USP4182262), which discloses both the use of a continuous vacuum and the creation of that vacuum from only a single vacuum source at the far end of the tube opposite the resin source.  In order to distinguish from Everson, Insituform amended claim 1 to include all the limitations of claims 2 to 4.


Only claim 1 of the e012 patent was asserted at trial.  It recites:


1. A method of impregnating with a curable resin an inner layer of resin absorbent material disposed in an elongate flexible tube having an outer layer formed by an impermeable film, the method comprising the steps of

(1) introducing into one end of the elongate tube a mass of the curable resin sufficient to impregnate the entire resin absorbent inner layer of the tube,

(2) forming a window in the impermeable outer layer of the tube at a distance from said one end of the tube,

(3) drawing through the window a vacuum in the interior of the tube downstream of said one end by disposing over the window a cup connected by a flexible hose to a vacuum source which cup prevents ingress of air into the interior of the tube while the tube is being evacuated, the outer layer of the tube being substantially impermeable to air,

(4) beginning at or near the end at which the curable resin mass was introduced, passing the tube between squeezing members which force the resin to flow towards the region of vacuum application as the tube progresses through the squeezing members,

(5) when the resin reaches the vicinity of the region of vacuum application, removing the cup and sealing the window,

(6) providing another window in the impermeable layer of the tube downstream of the previously formed window,

(7) drawing through the new window a vacuum in the interior of the tube while progressively moving the tube through the squeezing members to force the resin to flow toward the new region of vacuum application, and

(8) repeating steps 5, 6, and 7, where necessary to impregnate the entire resin absorbent inner layer of the flexible tube.


Insituform pointed out in the file history that the problem with Everson was that Everson's method was ineffective when dealing with a long length of tube because it required an exceedingly large suction compressor.


Insituform solved the problem by placing the suction source closer to the resin front, thus allowing the use of a smaller suction compressor.


Insituform has rebutted the Festo presumption.  The prosecution history and the discussion at Fed Cir compel the conclusion that the amendment limiting the literal scope of claim 1 to a single cup process bears "only tangential relation," to the equivalent in question (a multiple cups).  Insituform made it clear that the difference between its process and Everson process was that its process did not have the disadvantage of Everson's process (use of a large compressor at the end of the liner).  There is no indication in the PH of any relationship between the narrowing amendment and a multiple cup process (the alleged equivalent).




1. Estoppel as to the same limitation in unamended claims.

- Under Deering Precision v. Vector Distribution Sys (2003), the presumption (PHE) applies to all claims containing the limitation, regardless of whether the claim was or was not amended during the prosecution.