December 2013
Prosecution History Estoppel Presumptively Applies When Amendments Narrow the Scope of the Original Claims in Response to Patentability Rejections
| Judges: Rader, Clevenger, Moore (author) |
| [Appealed from D. Ariz., Chief Judge Silver] |
In Integrated Technology Corp. v. Rudolph Technologies, Inc., Nos. 12-1593, -1618 (Fed. Cir. Nov. 4, 2013), the Federal Circuit reversed the district court’s denial of a motion for JMOL that prosecution history estoppel bars the application of the DOE, as well as the district court’s finding of willful infringement. The Court also vacated the district court’s award of attorneys’ fees and costs, and remanded because the district court’s exceptional case analysis relied in part on the willfulness finding. But the Court affirmed the district court’s award of damages for literal infringement, as well as the district court’s finding of no laches.
Plaintiff Integrated Technology Corporation (“Integrated”) sued Defendant Rudolph Technologies, Inc. (“Rudolph”) for infringement of U.S. Patent No. 6,118,894 (“the ’894 patent”), which relates to the use of probes to test chips on semiconductor wafers. The ’894 patent specifically discloses a digital viewing system to assess whether probes have misaligned by predicting the length and location of scrub marks created on bonding pads as probe tips move along bonding pads. Claim 1 of the ’894 patent specifies that the viewing system obtains a digital image through a viewing window in a first state where the probe tip is driven in contact with the viewing window with a first force, and in a second state where the probe tip is driven in contact with the viewing window with a second force different from the first force.
Integrated alleged that Rudolph’s products fall into two categories, which both infringe the claims of
the ’894 patent. The first category (“pre-2007 products”) has probe tips that make physical contact with the viewing window before, or at, the moment an image is taken. The second category (“no-touch products”) includes three products that obtain a first image when the probe tips are about five microns above the viewing window. The district court granted SJ of literal infringement as to Rudolph’s pre-2007 products. After trial, the jury found that Rudolph’s literal infringement with the pre-2007 products was not willful and awarded Integrated lost profits. The jury also found that Rudolph’s no-touch products infringed the ’894 patent under the DOE, and that the infringement was willful. Rudolph moved for JMOL that prosecution history estoppel barred the application of the DOE, but the district court denied Rudolph’s motion. Rudolph appealed.
The Court first noted that a patentee bears the burden to rebut a presumptive application of prosecution history estoppel by establishing one of three exceptions by a preponderance of the evidence: (1) that the equivalent was unforeseeable at the time of the application; (2) that the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; and (3) that there may be some other reason suggesting that the patentee could not reasonably be expected to have described the equivalent.
“[Integrated’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. Whether [Integrated’s] interpretation of the prosecution history is plausible is irrelevant. It must prove by a preponderance of the evidence that, based on the prosecution history, the ‘objectively apparent reason for the narrowing amendment’ was only tangentially related to the equivalent.” Slip op. at 9 (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1369 (Fed. Cir. 2003) (en banc)).
In considering the ’894 patent, the Court noted that Integrated amended claim 1 of the patent to recite that the probe tip “is driven in contact with said window,” and that the amendment to the claim was made in view of patentability rejections. The district court found that such amendments were not narrowing and, as a result, that prosecution history estoppel did not preclude a finding of infringement by equivalence. Rudolph argued on appeal that the district court erred in finding that the amendments were not narrowing, and further argued that prosecution history estoppel presumptively applied because the narrowing amendment was made in response to patentability rejections. Rudolph also argued that Integrated could not rebut the presumption of prosecution history estoppel, because the equivalent bears a direct, rather than tangential, relationship to the amendment, and further because the equivalent was not technically unforeseeable at the time of the amendment. Integrated argued that the amendment was not narrowing, as the amendment only made explicitly what was previously implied, and even if the amendment was narrowing, Integrated rebutted the presumption that prosecution history estoppel applied.
The Court agreed with Rudolph that the amendment was a narrowing amendment, and held that prosecution history presumptively applied because the amendment narrowed the scope of the original claims in response to patentability rejections, and, therefore, Integrated surrendered the territory between the original and issued claims, including the equivalent (Rudolph’s no-touch products). The Court then held that Integrated failed to prove that an exception to prosecution history estoppel applied because (1) Integrated’s objectively apparent reason for the narrowing amendment was not tangential to the equivalent, and (2) Integrated had not proven that the equivalent was objectively unforeseeable.
The Court found that Integrated relied on direct contact between the probe tip and the window in response to the examiner’s rejection, even though such limitation was not needed to distinguish the original claim from the prior art cited by the examiner. As the Court noted, “It may be that [Integrated] did not need to surrender a lack of physical contact between the probe tip and window in either state to overcome [the prior art reference of] Sato. The dispositive fact is that [Integrated] chose to do so.” Slip op. at 8. Because Integrated specifically chose such a limitation, the Court held that “[Integrated’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.” Id. at 9. The Court also found that Integrated had not proven that the equivalent was objectively unforeseeable, because the equivalent is within the territory that was originally claimed by Integrated but was later surrendered by narrowing the claim to require physical contact.
The Court next affirmed the jury’s award of lost profits to Integrated for Rudolph’s literal infringement with its pre-2007 products. The Court held that the jury could have relied on a two-supplier theory, where it is reasonable to assume that the patent owner has the manufacturing and marking capabilities to have made the infringer’s sales. Therefore, the jury could have relied on the theory to conclude that lost profits incurred by the patent owner are independent from the existence of noninfringing alternatives. The Court also vacated the district court’s finding that the case was exceptional and the corresponding award of attorneys’ fees and costs, because the district court’s analysis depended in part on its judgment that Rudolph willfully infringed Integrated’s ’894 patent under the DOE, and that judgment has been reversed. Lastly, The Court affirmed the district court’s determination that Rudolph did not prove laches, since there was no clear error in the district court’s finding that Integrated did not unreasonably delay filing suit; therefore, whether Integrated’s delay prejudiced Rudolph is irrelevant.
