IR v. IXYS: Appellate Jurisdiction and Narrowing/Broadening Amendments

PatentLawPic208International Rectifier (IR) v. IXYS (Fed. Cir. 2008)

IR’s patents cover particular layouts for MOSFET semiconductor chips. After an earlier appeal IXYS was found to infringe under the Doctrine of Equivalents. (Only one of the three patents were held infringed)

Jurisdiction on Appeal: IXYS did not file a notice of appeal within thirty days as required by FRAP 4(a). However, the defendant did file a motion with the district court to stay the permanent injunction pending appeal. Because the motion gave notice of the appeal to both IR and the district court, the CAFC ruled that it satisfied the requirements of Rule 4(a).  (The stay was subsequently denied by both the district court and the CAFC motions panel).

Narrowed Amendment: On appeal IXYS argued that a narrowing amendment made by IR during prosecution of the patent forecloses any reliance on the doctrine of equivalents. The claim had been substantially rewritten and was undeniably broader in certain areas. However, the amendments also added an “adjoining” limitation to overcome a Section 112 rejection.  Holding: A claim that is both narrowed and broadened is still narrowed — Thus Festo estoppel can apply.

Tangential Narrowing Amendment: A narrowing amendment does not limit DOE coverage if the amendment was made for a reason that is only tangentially related to the claimed equivalent. Here, the amendment was not tangential because the “adjoining” region limitation was clearly related to the asserted charges against products with only non-adjoining regions. The court rejected (as irrelevant) IR’s argument that the amendment was not necessary for patentability: IR’s decision to claim that structure using the limiting term “adjoining, whether or not required to overcome the rejection, cannot be described as only tangentially related to the equivalency of a structure with non-adjoining regions. [This paragraph updated 2/15/08]

Finding of infringement reversed and remanded.

 

 

12 thoughts on “IR v. IXYS: Appellate Jurisdiction and Narrowing/Broadening Amendments

  1. 12

    Sorry Mooney I can’t understand you through the crack cloud circling your head.

    Fact is, if you weren’t so unnecessarily scabby and vitriolic and glib in your posts, people might have a chance of understanding anything meaningful that you may be saying (although it may be doubtful that you are saying anything really meaningful).

    Example “This is simply false,…”

    In my experience in this business, NOTHING is SIMPLY anything (except that “comprised of” is simply wrong). Therefore, when you lead off with a statement like that you mark yourself as quite possibly a crack smoking know-nothing.

    But hey, I’m just a simple caveman.

  2. 11

    Well Malcolm, it’s late in the evening and I’ve been out all evening so I might be missing something here, but what I had in mind is that when the drafter formulates the claims as filed, on his blank piece of paper, it is an explicit disclaimer of everything outside the strict literal scope of what he writes. Nobody obliges the drafter to limit to a pH range of from 3 to 6 (or whatever). To stretch that range after issue, to 2.4 or 6.6, strikes me as outrageous. It might have been OK in the old Germany of central claiming (claim as “Keep off the Grass” sign, but these days? So, why give such claims a DOE? Beats me!

  3. 10

    “Malcolm, along with Caveman, I was assuming that the narrowing prosecution amendment is entered without any accompanying statement about certain subject matter is being excluded from the scope”

    Sorry MaxDrei, I was addressing the statement I quoted, which is false to the extent it is non-trivial.

    Also, look carefully at what I wrote: I’m not describing claim amendments. I’m referring to explicit statements of disclaimer of claim scope in lieu of an amendment that are almost always more explicit with respect to the Applicant’s intent than “the originally filed claims [written] on a blank sheet of paper.”

    As for CaveBoy:

    “Dont worry about MM=LL=LB=DC(?) Max”

    More CaveBoy:

    “I agree with [Max] that the first and most important expression and support for what the applicant intended to give up is in the original specification.”

    Of course, Max didn’t say anything about the specification, nor was there any discussion of the “first and most important expression.” The phrase used was “most explicit intention.” That was the phrase I was addressing.

    I hope that’s clear enough. I’m sure it’s clear enough for MaxDrei, at least.

  4. 9

    Malcolm, along with Caveman, I was assuming that the narrowing prosecution amendment is entered without any accompanying statement about certain subject matter is being excluded from the scope. I realise that the court will infer such a statement anyway (unless there is some convincing other reason to explain away the amendment). In Europe we see daily competition for the best line of legal logic, between common law England and civil law mainland Europe. In my opinion this competition is healthy. For one thing, it keeps the worst excesses of common law equity from burgeoning out of control. Ask how much discovery the English patents courts permit, these days. Look at the DOE mess from that viewpoint. When the tail starts wagging the dog, something’s wrong.

  5. 8

    “A narrowing amendment does not limit DOE coverage if the amendment was made for a reason tangential to patentability. Here, the amendment was not tangential because it allowed the patentee to overcome the Section 112 rejection. Consequently, IR cannot claim DOE coverage for the element limited by ‘adjoining’.”

    Wow that’s a misstatement!

    “Tangential to patentability” isn’t the standard and it surely doesn’t create an absolute bar, as your summary suggests. You first look if there is a narrowing amendment substantially related to patentability. If so, then DOE is precluded unless one of the exceptions applies, including if the narrowing amendment is tangential TO THE ASSERTED EQUIVALENT.

    Your analysis suggests that, once you determine that the narrowing amendment was non-tangential to patentability, it’s an absolute bar. The Supremes shot that down, as you know. Please revise your summary.

  6. 7

    Thank you Mark,

    And I would add that if a claim feature was amended to broaden the coverage, then Festo type estoppel should not apply to the broadened feature, or at least not in the same way. For example, if the claim feature was broadened to extend coverage of certain subject matter, then a good estoppel argument as to that particular feature would be that, since the feature was deliberately broadened, then presumably the applicant knew how broad they wanted the coverage and therefore further broadening by interpretation should be limited. However, within the scope of the broadening amendment, application of DOE should be permitted.

    Dont worry about MM=LL=LB=DC(?) Max, I agree with you that the first and most important expression and support for what the applicant intended to give up is in the original specification. I also would NEVER include a comment like “our claim does not include.” (note to self: do NOT hire MM)

  7. 5

    MaxDrei: “the most explicit intention to give up is expressed by Applicant when writing the originally filed claims on a blank sheet of paper”

    This is simply false, MD. There is always some ambiguity about the scope of the claims. That ambiguity disappears when an applicant states on the record during prosecution that “the term in claim X does not include Y” or “the prior art teaches Y but our claims recite X, which does not include Y.”

  8. 4

    “The proper question should be whether the applicant intended to give up the subject matter in question in order to overcome the prior art, not whether the applicant amended a claim” OK Mark Pitchford, but the most explicit intention to give up is expressed by Applicant when writing the originally filed claims on a blank sheet of paper. Beats me, therefore, why a DOE is available for original claims that sail through unamended, while being unavailable for the poor innocent inventor surprised during prosecution by another art doc.

  9. 3

    Actually, I think the CAFC is more to blame with respect to Festo and the all but per se rule that an amendment precludes use of the DOE with respect to the amended language.

  10. 2

    The rantings of Festo. The more the Supremes talk, the more trouble they cause.

    The point of PHE is not that because you filed an amendment, you no have no DOE. The point is that because you excluded particular subject matter covered by the prior art to gain patentability, you have expressly given up that subject matter and can not get it back.

    The proper question should be whether the applicant intended to give up the subject matter in question in order to overcome the prior art, not whether the applicant amended a claim.

  11. 1

    The rantings of Festo. The more the Supremes talk, the more trouble they cause.

    The point of PHE is not that because you filed an amendment, you no have no DOE. The point is that because you excluded particular subject matter covered by the prior art to gain patentability, you have expressly given up that subject matter and can not get it back.

    The proper question should be whether the applicant intended to give up the subject matter in question in order to overcome the prior art, not whether the applicant amended a claim.

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