The following is a reprint of Mr. Cohen's article published in IPL Newsletter, Vol 19, Number 2, Winter 2001, pages 12-13.
The Rule O' Festo (by Neal M. Cohen)
In Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 95-1066, decided November 29, 2000, the Federal Circuit reviewed en banc five specific issues relating to the doctrine of equivalents that it wished to resolve in the wake of the Supreme Court’s Warner-Jenkinson decision.1There are six opinions in addition to the majority opinion, all of which discuss some interesting legal principles. This article, however, focuses on how the lives of scribes2 across the country will be forever changed by Festo. Thus, do not look here for a detailed analysis of the concurring opinions, or even of the majority opinion. Many such articles will surface in the days, weeks, and months ahead. Instead, start to concentrate on the practical effect Festo may have on the lives of patent scribes. When you're ready, read on.
Of the five issues addressed in Festo, one of those issues, number 2 asked whether a voluntary amendment could create prosecution history estoppel, to which the Court said that indeed it could. Issue number 4 involved what range of equivalents, if any, is available under the doctrine of equivalents for a claim limitation amended in which "no explanation" was established. To answer that question, the Court pulled a quote right out of Warner-Jenkinson Co., and held that when no explanation for a claim amendment is established, no range of equivalents is available for the claim limitation so amended. Another issue, number 5, related to the specific case at hand, and was not ruled on by the Court. Putting issues 2, 4, and 5 aside temporarily, it is the remaining issues, numbers 1 and 3, that captured my attention.
Issue number 1 was whether prosecution history estoppel could be invoked based only upon amendments made to overcome § 102 and § 103 art, or also upon amendments made for other reasons related to the statutory requirements of patentability.3
Issue number 3 was what range of equivalents, if any, is available under the doctrine of equivalents for a claim limitation amended in a manner which does in fact create prosecution history estoppel.
The Court's answers to these questions have convinced me that Festo is the Federal Circuit's next step - a mighty one I might add - towards judicially destroying the judicially-created and controversial doctrine of equivalents.
Regarding issue number 1, the Court held that prosecution history estoppel could be invoked based upon amendments made for "any reason which relates to the statutory requirements for a patent". The Court supported its reasoning by citing cases in which the PTO has rejected claims for reasons involving §101, and every aspect of §112, including the requirement for definiteness, and stated that "the functions of prosecution history estoppel cannot be fully satisfied if substantial reasons related to patentability are limited to a narrow subset of patentability issues. Rather, substantial reasons related to patentability include 35 U.S.C. §§ 101 and 112 issues, as well as 35 U.S.C. §§ 102 and 103 issues."
Regarding issue number 3, the Court noted that there were two different approaches to the issue set forth in two different cases,4 which is perhaps why the Court felt the need to clear up the issue in Festo. To do so, the Court held that when a claim amendment creates prosecution history estoppel, no range of equivalents is available for the amended claim limitation.
So combining the Court's holdings regarding issues 1 and 3, we are given a new rule which seems to state:
When an amendment is made that relates to any statutory requirement for patentability, the patentee cannot later invoke the doctrine of equivalents for the limitation so amended.
Let's see if that's what the Court really meant. Consider a situation in which a claim is rejected under §112 on the grounds that a reference to "the first dolt" is lacking antecedent basis. The patent attorney then amends the claim to refer to "the first bolt" and overcomes the rejection. Could that claim be infringed by a device which uses an equivalent of "the first bolt", all other limitations being present in the accused device? Based on the aforementioned rule, the answer would be "no". However, fear not. There is other language, and there are other facts, which lead to a different, and not so ridiculous rule.
Most notably, regarding issue number 1, the Court states "a narrowing amendment made for any reason related to the statutory requirements for a patent will give rise to prosecution history estoppel" with respect to the amended claim limitation. Similarly, in discussing issue number 3 the Court holds that "prosecution history estoppel acts as a complete bar to the application of the doctrine of equivalents when an amendment has narrowed the scope of a claim for a reason related to patentability." And in discussing Issue number 5, the Court stated that to determine whether a claim amendment gave rise to prosecution history estoppel, it must first be determined "whether the amendment narrowed the literal scope of the claim". All of those statements require the amendment to actually narrow the scope of the claim before the amendment can be the basis for prosecution history estoppel.
Thus, I believe Festo stands for the following rule, which I surmise will be referred to by patent practitioners and the courts alike as the Rule O' Festo (pronounced "Roo-la-fés-toe"):
Rule O' Festo
When a claim amendment is made that relates to any statutory requirement for patentability, and the amendment narrows the claim, the patentee cannot later extend its claim by invoking the doctrine of equivalents for the limitation so amended.
I recommend memorizing the Rule O' Festo, in detail, if for no other reason than to allow for entertaining cocktail conversations with the spouses of your colleagues at law firm parties. However, for those who prefer short rules, the following abridged Rule should suffice:
Rule O' Festo, abridged
If you amend, you can't extend.
Okay. So that's it. It's not the end of the world. It's just pretty much the end of patentees using the doctrine of equivalents on claim limitations narrowed by amendment for reasons related to patentability. Patentees can still use the doctrine of equivalents for amendments that broaden the scope of claims. And there are amendments not related to the statutory requirements for patentability. And if you really want to find a silver lining, you could always point out that the Rule O' Festo applies only to the amended limitation, and not to the entire claim or even to the entire element associated with the limitation. But in reality, the Federal Circuit has put a serious nail in the coffin of the doctrine of equivalents. Not that it's the wrong thing to do. But, it does have a profound effect on how I intend to prosecute applications, in an attempt to design around the Rule O' Festo. Some practice pointers follow.
Okay, here is what you've been waiting for. To design around the Rule O' Festo, we must simply avoid making narrowing amendments related to the statutory reasons for patentability. So, either don't make amendments, don't make them narrowing, or don't make them for reasons related to patentability.
A colleague of mine played off of the first option, and suggested simply canceling all non-allowed claims, and filing a continuation application to prosecute other claims. Over, and over, and over. Never make an amendment! That seemed like a brilliant idea to me at first, and it actually might work. But I could definitely see the Court holding that prosecution of a claim in a continuation, is similar to canceling and redrafting a claim in the same application, which the Court in Festo stated was in fact a Festo "claim amendment". Filing continuations for twenty years is also a practice not financially feasible for many clients.
An additional strategy for avoiding amendments altogether, is to make an extra effort to ensure claims are free of potential §112 objections / rejections from the start. We should be doing that anyway, but I guess now we'll be more motivated.
Similarly, I wouldn't want to have only broad independent claims in my initial applications, because I might have to, uh, you know, amend them all. Thus, I recommend drafting at least one independent claim that is narrow in light of the known prior art.
For provisional applications (yes, these really do get filed), I recommend simply not drafting any claims at all. Not necessary. Why risk it?
As for the second and third design around options - making sure any amendments are not narrowing or are not related to the statutory requirements of patentability - well, if an amendment is actually necessary to overcome a cited reference, I guess Festo will rule. But we could always add Festo-thwarting statements at the conclusion of each Remarks section, which read something like this: (1) "No amendment made was related to the statutory requirements of patentability unless expressly stated herein"; and (2) "No amendment made was for the purpose of narrowing the scope of any claim, unless Applicant has argued herein that such amendment was a narrowing amendment made to distinguish over a specified reference or references."5
In addition, it might be wise to actually state the reason for each and every amendment to each and every amended claim, especially if any of the amendments truly were made for a reason not related to the statutory requirements of patentability. Such a situation might arise because Applicant simply wants to claim different or additional subject matter. That's very common, but a hard sell unless the amendment is a "voluntary" amendment. Such voluntary amendments may occur in response to a rejection, but are more typical in response to an allowed claim, to which many-a-prosecutor routinely (and voluntarily) add dependent claims as a matter of course. Voluntary amendments are also very common during preliminary amendment practice.
Oh no! Speaking of preliminary amendments, I have an old habit of filing parent claims in a continuation, and simultaneously filing a preliminary amendment canceling them all and adding new claims. No more. Effective post-Festo, I have broken that habit. After all, what if I forget to state a reason for one of the preliminary "amendments", or worse yet I think I state a reason, but the Court disagrees? Well, the Festo Court, in answering Issue number 4, reaffirmed what would happen. No reason for "amendment", no range of equivalents. Harsh.
As for counseling clients, I will do so in more detail as to the potential effects of claim amendments. And for clients attempting to design around patents, I will be more likely to give them a green light in situations involving the design around of a claim limitation subject to the Rule O' Festo.
This doctrine of equivalents sure does cause a lot of problems. Maybe Festo will work its way to the U.S. Supreme Court, and the doctrine of equivalents will be totally eliminated. Maybe.
fn1. Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997).
fn2. Scribe: Latin < scriba < scribere < write. One who writes or copies manuscripts. [Commonly used by patent attorneys to describe themselves when drafting fresh patent applications].
fn3. I have stated the issue a bit differently, and hopefully quite a bit clearer, than did the Court.
fn4. Hughes Aircraft Co. v. United States, 717 F.2d 1351, 219 USPQ 473 (Fed. Cir. 1983) (“Hughes I”), and Kinzenbaw v. Deere & Co., 741 F.2d 383, 222 USPQ 929 (Fed. Cir. 1984).
fn5. These statements are better than nothing, but not by much. The Courts usually tend to disregard these catch-all statements. Thus, I expect they might have the same effect as a statement that says "Please do not apply the Rule O' Festo to these amendments". If any reader has a better idea, please e-mail me through my website (http://www.nmcohen.com).