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[pentazole]

Just curious if anyone would like to share some thoughts on the above referenced case.  The April 18 decision can be found here:  http://www.ipo.org/AM/Template.cfm?Section=This_Weeks_Daily_News&CONTENTID=17963&TEMPLATE=/CM/ContentDisplay.cfm

[JD]

My thoughts are: this case demonstrates how completely clueless the judges at the Fed. Cir., with the exception of Newman, and possibly one or two more, really are.

[JSonnabend]

Newman is dead-on accurate.  When an "objected to" dependent claim is re-written in independent form, nothing has been narrowed, or, for that matter, rejected.  The Festo estoppel should not apply.

It's an unfortunate decision to say the least, but not surprising.

The fallout of this case (both CAFC decisions) may be to advise clients to use only independent claims despite the high cost in fees of doing so.

- Jeff

[Isaac]

"The fallout of this case (both CAFC decisions) may be to advise clients to use only independent claims despite the high cost in fees of doing so."

This tactic won't work.  I think an appreciation of the majority position in the first Honeywell case would clear this up.

In the original Honeywell case, the application of Festo did not arise because of the change in form of a claim from dependent to independent format, but rather because of the cancelation or disappearance of the original broad independent claim from the application.  In my opinion, not applying Festo in situations like the Honeywell does result in a form or substance situation where it does matter whether claims are submitted in independent or dependent form.  For example if the result in Honeywell were as the dissent suggested, it would matter whether you incorporated dependent claim 2 into claim 1 and canceled claim 2 or instead amended claim 2 and canceled claim 1.  Under Honeywell the impact on prosecution history in the two cases is the same.

So even if you write all of your claims in independent format, canceling a broad independent claim during prosecution can still produce a narrowing amendment (with regard to the claimed scope in the patent) and will trigger Festo-style prosecution history estoppel.  Please don't shoot the messenger.

IMO it's Festo that is at fault here and not the Honeywell.

[Gauge]

I think Newman got it right in his dissent.  His best line:

"...my colleagues apply the Festo rebuttal criteria in significantly more restrictive ways than were established by the Supreme Court. The Court had explained that "[t]hough prosecution history estoppel can bar a patentee from challenging a wide range of alleged equivalents made or distributed by competitors, its reach requires an examination of the subject matter surrendered by the narrowing amendment." Id. at 737. However, my colleagues do not examine the surrendered subject matter, and indeed they can not, for there is no narrowing amendment to define surrendered subject matter. The dependent claims were not rejected on any ground; they were simply "objected to" because they were in dependent form."

[pentazole]

How would this impact litigation/prosecution in terms of precedent if it's not taken to supreme court?

[JSonnabend]

So even if you write all of your claims in independent format, canceling a broad independent claim during prosecution can still produce a narrowing amendment (with regard to the claimed scope in the patent) and will trigger Festo-style prosecution history estoppel.  Please don't shoot the messenger.

Actually, I think you very well me be right on this, so I won't shoot.  I wonder if filing a continuation and letting the original application go abandoned would get around this problem. 

- Jeff

[oddtimeflux]

JS, how would this work, exactly? And why abandon the former application?

I face a similar dilemma as I will soon file my claims. The best advice about this was from Jim Ivey:
"I think it's better to work to get the claims correct during prosecution than to try to avoid Festo.  I believe it's easier to consider all possible uses/adaptations of the invention in front of you than to anticipate all prior art that can be cited against you.."
http://www.intelproplaw.com/ip_forum/index.php?topic=2543.msg11352#msg11352


How can a continuation help in such a strategy (which I completely prefer than just counting on DoE)?

[JD]

"So even if you write all of your claims in independent format, canceling a broad independent claim during prosecution can still produce a narrowing amendment (with regard to the claimed scope in the patent) and will trigger Festo-style prosecution history estoppel.  Please don't shoot the messenger."

I disagree.  Under Hamilton Sundstrand, if you present two claims, one independent and one dependent, there may be PHE if you have to write the dependent in independent form.

For example, you present:

1.  An apparatus, comprising:A; B; C; and D.

2.  An apparatus according to claim 1, further comprising:  E

If claim 1 is rejected and claim 2 is objected to, and you rewrite claim 2 in independent form to put the application in condition for allowance, the holding of Hamilton Sundstrand results in you losing all equivalents of element E.

However, if you present two independent claims:

1.  An apparatus, comprising:  A; B; C; and D.

2.  An apparatus, comprising:  A; B; C; D; and E.

and claim 1 i rejected but claim 2 is indicated allowable, and you cancel claim 1 to put the application in condition for allowance, I don't believe that Hamilton Sundstrand would result in the loss of equivalents for element E.

I agree that Festo clearly stated that the form of the amendment will not trump the substance of the amendment, but Hamilton Sundstrand sort of ignored that directive of Festo and seems to stand for the proposition that the form of the amendment does matter.