Addressing this relationship, the Federal Circuit held that prosecution history estoppel is irrelevant for determining the scope of a claim in a literal infringement analysis.
(358) For example, in all cases of [section] 112 [paragraph] 6 where the accused device uses technology existing at the time of patent issuance and performs the identical function as the claimed invention, the doctrine of equivalents would not be applicable, (359) and neither would be prosecution history estoppel. (360) Consequently, inconsistent amendments or statements during prosecution would not limit the scope of such claims.
Prosecution history estoppel further illustrates the Federal
(164) One of these is prosecution history estoppel,
Prosecution history estoppel would apply only if the applicant in
for infringement and Festo's test for prosecution history estoppel
Prosecution history estoppel arises when the patentee
prior art, prosecution history estoppel stems from the belief that the
FESTO AND THE SUPREME COURT'S RESOLUTION OF AN ANALOGOUS PROBLEM-APPLICATION OF PROSECUTION HISTORY ESTOPPEL
This Part will examine how the Federal Circuit and the Supreme Court dealt with the tension between the doctrine of prosecution history estoppel and the doctrine of equivalents through the lens of the litigation between Festo Corporation and Shoketsu Kinzoku Kogyo Kabushiki Company Before, however, any in-depth discussion of this litigation and how the Supreme Court's analysis in this case is applicable to Johnson & Johnston-type disputes, a brief discussion of the doctrine of prosecution history estoppel is in order.
The balancing doctrine of prosecution history estoppel
holds that competitors may rely on the public record of the patent prosecution to limit the doctrine of equivalents.
The scope of the doctrine is limited by several analytical tools, including the all limitations rule, prosecution history estoppel
, and the specific exclusion doctrine.