You are on page 1of 1


SHOKETSU KINZOKU KOGYO KABUSHIKI argue that the surrendered territory was made up of unforeseen subject matter that
CO. LTD. should be deemed equivalent to the literal claims of the issued patent. To give up an
No. 00-1543, May 28, 2002 appeal of rejection and submit an amended claim is an acknowledgement that the
Doctrine of Equivalents invention as patented does not reach as far as the original claim. Therefore, the
patentee is giving up certain subject matter as a condition of receiving a patent. When
an amendment is narrowed to satisfy any requirement of the Patent Act, estoppel may
FACTS: Petitioner Festo Corporation owns two patents for an improved magnetic result. Before a patent can issue, there are statutory requirements that must be
rodless cylinder, a piston-driven device that relies on magnets to move objects in a met. When an amendment is made to secure a patent and the amendment narrows the
conveying system. The device has many industrial uses and has been employed in scope of the patent, estoppel results. If an amendment only concerns the form of the
machinery as diverse as sewing equipment and the Thunder Mountain ride at Disney application and not the subject matter of the invention, then it would not narrow the
World. patent"s scope or raise an estoppel. When a patent"s scope is narrowed by a necessary
amendment, estoppel may apply. (2) Yes. The court of appeals was wrong in holding
After Festo began marketing its device, Shoketsu Kinzoku Kogyo Kabushiki Co. that estoppel prevents the inventor from claiming infringement against any equivalent
(SMC, respondents) entered the market with a device that used one two-way sealing to the narrowed element. It was incorrect to adopt a complete bar. The reach of
ring and a nonmagnetizable sleeve. Festo Corporation already owned two similar prosecution estoppel requires an examination of the subject matter surrendered by the
patents (although their initial patent application was rejected) for this industrial device. narrowing amendment. Such an inquiry would be avoided by a complete bar. The
Festo filed suit, claiming that SMC's device was sufficiently similar that it infringed narrowing amendment may show what the claim is not, but it may not capture what
Festo's patents under the doctrine of equivalents. Festo's claim had been amended the claim is and therefore equivalents may still exist. The amended claim is not so
during prosecution for, at the very least, compliance with 35 U.S.C. §112, and thus perfect in description that no one could create an equivalent. The patentee should bear
Shoketsu claimed that prosecution history estoppel should bar Festo from asserting the burden of showing that the amendment does not give up the specific equivalent in
equivalents. question. In some cases the amendment is not reasonably viewed as giving up a
The United States District Court for the District of Massachusetts held that Festo's particular equivalent. The equivalent may not have been foreseeable at the time of the
amendments were not made to avoid prior art, and therefore the amendments were not application or the reasoning underlying the amendment may bear no more than a
the kind that give rise to estoppel. A panel of the Federal Circuit affirmed. comparable relation to the equivalent in question. The patentee must establish that at
The Supreme Court granted certiorari, vacated, and remanded in light of an the time of the amendment, one skilled in the art could not have reasonably been
intervening decision in Warner-Jenkinson v. Hilton Davis Chemical Co.. After a expected to have drafted a claim that would have literally included the alleged
decision by the original panel on remand, the Federal Circuit ordered rehearing en equivalent. In this case, Plaintiff did not deny the presumption that estoppel applies,
banc. The court sitting en banc held that claim amendments made for compliance with and the equivalents have been surrendered. The limitations were made following
the Patent Act presented a complete bar to claiming equivalents. rejection. The question then becomes what territory the amendments surrendered, or
whether they surrendered the equivalents at issue.
ISSUE: Did the Court of Appeals err in claiming that estoppel can be applied to every
amendment made to satisfy the requirements of the Patent Act and not just to
amendments made to avoid preemption by an earlier invention, and that when estoppel
arises does it prevent every suit against every equivalent to the amended claim

HELD: NO. (1) No. The court of appeals was not wrong in holding that a narrowing
amendment made to satisfy any requirement of the Patent Act might result in
estoppel. The scope of a patent is not limited to its literal terms but instead includes
all equivalents to the claims described. Prosecution history estoppel requires that the
claims of a patent be interpreted in light of the proceedings in the PTO while the
application is being processed. When the patentee narrows a claim regarding subject
matter in response to a denied charge of patent infringement, the patentee may not