Where can Prosecution History be found

Prosecution history is available to the public in the USPTO’s Patent Application Information Retrieval system (PAIR) http://portal.uspto.gov/pair/PublicPair PAIR accesses patent information held in the USPTO internal Patent Application Locating and Monitoring (PALM) system and presents it in two different web-based views: Public PAIR and Private PAIR. PAIR provides web-based access for pending patent information and eases the process of tracking patents, patent applications, and follow-on documents through the USPTO approval process. Public PAIR provides status and history information for issued patents and published applications. In Public pair you can search for application information using the Application number; the control number; a Patent number; a PCT number; or the publication number. Private PAIR provides controlled access to non-public patent information, and Private PAIR provides access to all public information.  There is an application process to gain access to Private PAIR.

In re Bogese, 303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453 (Fed. Cir. 2002)

Applicant filed twelve continuation applications over an eight-year period and applicant did not advance prosecution when the PTO gave the applicant an opportunity to advance prosecution.  In Borgese the Federal Circuit ruled that applicant had forfeited their right to a patent under the doctrine of prosecution history laches for unreasonable and undue delay in prosecution.  Prosecution history laches is not a hard and fast rule but the court ruled that where “multiple examples of repetitive filings that demonstrate a pattern of unjustified delayed prosecution,” laches may apply. Symbol Tech. Inc. v. Lemelson Med., Educ., & Research Found., 422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360 (Fed. Cir. 2005)

Precision Instrument Mfg. Co. v. Automotive Co. - 324 U.S. 806 (1945)

Precision applied for a patent that interfered with Automotive’s patent.  Precision falsified dates and information during the interference proceedings on their patent.  Automotive at least suspected Precision of fraud in their application.  Automotive brought this up to Precision’s attorney and Precision’s attorney withdrew.  The new counsel for Precision settled with Automotive and Automotive became the owner of the patents that came out of the interference proceeding. Relations between Automotive and Precision declined and Automotive sought to enforce the patent they obtained from Precision, against Precision.

When Automotive sued to enforce their patent the district court denied damages saying that because Automotive knew of the falsified dates and information that Automotive’s conduct was inequitable, and Automotive could not sue for damages.  The Appeals court reversed, and the Supreme court via a split decision, affirmed the district court’s determination that the patent was unenforceable due to inequitable conduct.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002)

The Doctrine of Equivalents says equivalents of the claimed elements in a patent claim can also cause infringement.  Judge Learned Hand said that courts "resort to the 'doctrine of equivalents' to temper unsparing logic and prevent an infringer from stealing the benefit of the invention.”  Royal Typewriter co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948) One of the limits on the Doctrine of Equivalents is prosecution history estoppel. Prosecution history estoppel is the presumption that any narrowing limitation added to the claims during prosecution bars the doctrine of equivalents in defining scope of the amended claims.

After Festo began marketing its patented device, Shoketsu marketed a device that allegedly infringed Festo's patented device.  Festo charged infringement under the doctrine of equivalents.  Festo's claim had been amended during prosecution to fix a 35 U.S.C. §112 problem, and Shoketsu claimed that prosecution history estoppel should bar Festo from asserting equivalents.  The court decided that the prosecution history estoppel presumption is rebuttable where:

• the amendment cannot reasonably be viewed as surrendering a particular equivalent;

• the 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 there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.  

Impermissible Recapture in a Reissue examination flowchart

Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (federal circuit 1988),

Inequitable conduct during prosecution can invalidate a patent in later litigation. Inequitable conduct resides in failure to disclose material information, or submission of false material information, with an intent to deceive, and those two elements, materiality and intent, must be proven by clear and convincing evidence.

Kingsdown had a claim rejected and then Kingsdown renumbered the claim and told the examiner that the renumbered claim had the same wording as an already allowed claim.  The District court found that the amendment was material, because the amendment was made to overcome a rejection; the District court found that the amendment was deceitful because the amendment was at least grossly negligent; and the District court invalidated the patent on grounds of inequitable conduct.  The Federal Circuit found that the District court’s decision regarding inequitable conduct was clearly erroneous and reversed the decision and remanded the case.

Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co. 520 U.S. 17 (1997)

The Doctrine of Equivalents says equivalents of the claimed elements in a patent claim can also cause infringement.  Judge Learned Hand said that courts "resort to the 'doctrine of equivalents' to temper unsparing logic and prevent an infringer from stealing the benefit of the invention.”  Royal Typewriter co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948) One of the limits on the Doctrine of Equivalents is prosecution history estoppel. Prosecution history estoppel is the presumption that any narrowing limitation added to the claims during prosecution bars the doctrine of equivalents in defining scope of the amended claims.

In Warner-Jenkinson a chemical process was patented.  During prosecution a limitation was added that a step in the chemical process had to be carried out at a PH of between six and nine.  The upper limit, nine, was added to overcome the prior art of record; but at the time of trial, it was unclear why the lower limit, of six, was added to the claimed chemical process.  The alleged infringer was doing the same chemical process at a PH of two and the patent owner sued the infringer arguing that under the doctrine of equivalents, the infringer was using an insubstantial tweak to the chemical process to avoid literal infringement.  The Supreme court decided that prosecution history should be used to limit the doctrine of equivalents whenever an amendment was made for a “substantial reason related to patentability…” and left it up to lower courts to decide what a substantial reason related to patentability is.  Waner-Jenkinson also did not decide whether prosecution history estoppel was a complete bar to Doctrine of Equivalents or whether prosecution history estoppel just limited the number of things that could be considered equivalents.

Impermissible Recapture in a Patent Reissue Application

A Reissue application is an application filed with the USPTO that seeks to broaden the scope of a previously allowed patent.  A reissue application will not be allowed where the claimed subject matter was surrendered during the application process for the original patent.  Applying for previously surrendered subject matter in a Reissue Application is called “recapture” and it is not allowed.

There is a three step test for recapture outlined in the North American Container case, 415 F.3d at 1349, 75 USPQ2d at 1556.

North American Container says that impermissible recapture happens when:

• The reissue claims are broader than the original patent claims;
• The limitations of the reissue claims that have been broadened are limitations regarding subject matter that was surrendered in the original application;
• and the limitations were material to the allowance of the patent in the original application.