DOE/PHE II

1. DOE/PHE II 3.6.04 Patent Law

2. United States Patent 4,354,125 Stoll October 12, 1982 Magnetically coupled arrangement for a driving and a driven member The invention is concerned with a magnetically coupled arrangement for a driving and a driven member, which arrangement is operable by a pressure medium and is used in a conveying system. A slidable piston (16) within a tube (10) has an arrangement of annular magnets (20) provided at each end with sealing and sliding members (24, 26). A driven assembly (18) slidable on the outer surface of the tube (10) has an arrangement of annular magnets (32) corresponding to the magnets (20) and provided at each end with a sliding ring (44). The members (24, 26, 44) prevent ingress of foreign bodies to the magnet locations, and consequently enable the spacing between the magnets and the tube (10) to be very small. A good magnetic coupling is achieved resulting in effective transmission of power. Several pistons (16) abutting one another can be used for conveying heavy loads. Inventors: Stoll; Kurt (Lenzhalde 72, D-7300 Esslingen, DE) Appl. No.: 153999Filed: May 28, 1980

5. 1st point: “related to patentability” • Enablement estoppel is now a reality • P. 949 • What would a “truly cosmetic” amendment look like?

6. 2nd Point: The 3-Part Test • Supreme Court rejects “complete bar”

7. Original Claim Scope

8. Original Claim Scope Narrowed Scope, after amend-ment

9. 2nd Point: The 3-Part Test • P 952 • [1] Unforeseeable equivalents • [2] Amendment bears “tangential relation” to equivalent • [3] “Some other reason” -- expectations

10. Festo, point 1: Glaxo Wellcome,Inc. v. Impax Laboratories, Inc., 356 F.3d 1348, C.A.Fed. 2004 “The application did not enable any sustained release agents other than HPMC, however, because it only disclosed HPMC's time release and plasma profiles. Indeed the original claims recited those profiles. The examiner expressly stated that only HPMC enabled claims with these profiles. The application did not enable one of skill in the art to make and use a broader genus of sustained release agents. Thus, the examiner's enablement argument, which Glaxo did not rebut, shows that Glaxo surrendered other controlled sustained release agents known to act as equivalents of HPMC.”

11. “Foreseeability” Test • Pioneer Magnetics, Inc. v. Micro Linear Corp., 330 F.3d 1352 (Fed Cir. 2003), the Federal Circuit, on a motion for reconsideration, affirmed the district court's finding of noninfringement, including noninfringement under the doctrine of equivalents based on prosecution history estoppel.

12. Claims a power supply circuitry unit that receives various levels of voltage and emits a constant level of output voltage. During prosecution of the '366 patent, the Patent Office rejected pending claims as anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 4,437,146 (the Carpenter reference). The Carpenter reference disclosed a power supply containing a non-switching multiplier, and it did not disclose a power supply having a switching multiplier.

13. Pioneer argued that the amendment from "multiplier“ to "switching analog" multiplier circuit did not pertain to patentability, but was made through sheer inadvertence. The Carpenter reference itself disclosed a non-switching multiplier circuit, demonstrating that such a circuit was foreseeable at the time of the amendment.

14. On remand: 344 F.3d 1359, 1363-64 (Fed. Cir. 2003) “Festo cannot overcome th[e] presumption [of surrender] by demonstrating that the rationale underlying the narrowing amendments bore no more than a tangential relation to the accused equivalents or by demonstrating that there was "some other reason" such that the patentee could not reasonably have been expected to have described the accused equivalents. However, we remand to the district court to determine whether Festo can rebut the presumption of surrender by establishing that the equivalents in question would have been unforeseeable to one of ordinary skill in the art at the time of the amendments.”

15. Prosecution Disclaimer "[t]he doctrine of prosecution disclaimer is well established in Supreme Court precedent, precluding patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.Cir.2003). Contrary to prosecution history estoppel which limits the doctrine of equivalents, prosecution disclaimer applies to the determination of literal infringement by excluding from the claim construction any claim scope that has been clearly and unmistakably disavowed during prosecution.

16. AccuScan, Inc. v. Xerox Corp. 76 Fed.Appx. 290, C.A.Fed. 2003 (Unpub)

17. We think that all the Supreme Court intended was that, if we again considered the prosecution history estoppel point, we should do so in light of the Court's elucidation of that doctrine in its Festo opinion. There is no reason to believe, however, that the Supreme Court intended to require us on remand to limit our analysis to the theory we previously had followed. Indeed, our disposition of this appeal on grounds other than prosecution history estoppel literally complies with the Supreme Court's order in the sense that, "in light of Festo," we have "further considered" the case and concluded that the judgment of the district court should be affirmed on another ground. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1310-11 (Fed.Cir.2003).

18. “[I]n a binary choice situation where there are only two structural options, the patentee's claiming of one structural option implicitly and necessarily precludes the capture of the other structural option through the doctrine of equivalents.” • Senior Technologies, Inc. v. R.F. Technologies, Inc., 76 Fed.Appx. 318, 321, C.A.Fed. 2003.