United States Federal Circuit

An amendment to a patent application that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element.

Appellate Information

• Decided 11/29/2000
• Published 11/29/2000

Judges

• Before MAYER, Chief Judge, NEWMAN and MICHEL, Circuit Judges, PLAGER, Senior Circuit Judge,LOURIE, CLEVENGER, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, and PROST, Circuit Judges.

Court

• United States Federal Circuit

Counsel

• For Appellant:
  
• Lynn E. Eccleston, Eccleston Law Firm, of Washington, DC, for amicus curiae Bar Association of the District of Columbia, Patent, Trademark & Copyright Section., J. Richard Manning, President, Washington State Bar Association, of Seattle, Washington, for amicus curiae, Washington State Bar Association.   With him on the brief were Jerry A. Riedinger and James P. Donohue., Joshua R. Rich, McDonnell Boehnen Hulbert & Berghoff, of Chicago, IL, for amicus curiae, The Association of Patent Law Firms.   With him on the brief were Paul S. Tully and S. Richard Carden., Kelly L. Morron, Chadbourne & Parke LLP, of New York, NY, for amicus curiae, The Association of the Bar of the City of New York., Claire Laporte, Foley Hoag LLP, of Boston, MA, for amicus curiae The Federal Circuit Bar Association.   With her on the brief was Denise W. DeFranco.   Of counsel on the brief was George E. Hutchinson, Executive Director, Federal Circuit Bar Association, of Washington, DC., Nancy J. Linck, Sr. Vice President, General Counsel & Secretary, Guilford Pharmaceuticals Inc., of Baltimore, MD, for amicus curiae, Biotechnology Industry Organization., Lawrence F. Scinto, Fitzpatrick, Cella, Harper & Scinto, of New York, NY, for amicus curiae, American Intellectual Property Law Association.   With him on the brief was Michael P. Sandonato.   Of counsel on the brief were Ronald E. Myrick, President, American Intellectual Property Law Association, of Arlington, VA;  David G. Conlin P.C., Edwards & Angell, LLP, of Boston, MA;  and Janice M. Mueller, John Marshall Law School, of Chicago, IL., Maxim H. Waldbaum, Salans, of New York, NY, for amicus curiae, Fédération Internationale Des Conseils En Propriété Industrielle.   Of counsel on the brief were R. Danny Huntington, Burns, Doane, Swecker & Mathis, L.L.P., of Alexandria, Virginia;  John P. Sutton, of San Francisco, CA;  Raymond C. Stewart, Birch, Stewart, Kolasch & Birch, LLP, of Falls Church, VA;  and Tipton Jennings IV, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC., Mark S. Davies, Attorney, Civil Division, Department of Justice, of Washington, DC, argued for amicus curiae, the United States.   With him on the brief were Vito J. DiPietro,Anthony J. Steinmeyer, and John Fargo, Attorneys.   Of counsel on the brief were James A. Toupin, General Counsel;  John M. Whealan, Solicitor;  Thomas W. Krause, Cynthia C. Lynch, and Linda Moncys Isacson, Associate Solicitors, United States Patent and Trademark Office, Office of the Solicitor, of Arlington, VA., Nicholas J. Seay, Quarles & Brady LLP, of Madison, Wisconsin, for amicus curiae, The Wisconsin Alumni Research Foundation, et al.   With him on the brief were Anthony A. Tomaselli, Kristin Graham Noel, and Josephine K. Benkers., James P. Leeds, Eli Lilly and Company, of Indianapolis, IN, for amicus curiae, Eli Lilly and Company.   With him on the brief was Robert A. Armitage., Kenneth C. Bass III, Sterne, Kessler, Goldstein & Fox, P.L.L.C., of Washington, DC, for amicus curiae, Sterne, Kessler, Goldstein, & Fox, P.L.L.C. With him on the brief were David K.S. Cornwell and Linda E. Alcorn., Richard F. Ziegler, Cleary, Gottlieb, Steen & Hamilton, of New York, NY, for amicus curiae, United Technologies Corporation, et al.   With him on the brief was David H. Herrington., Dan L. Bagatell, Brown & Bain, P.A., of Phoenix, AZ, for amicus curiae, Intel Corporation., Joshua D. Sarnoff, Glushko-Samuelson Intellectual Property Law Clinic, Washington College of Law, American University, of Washington, DC, for amicus curiae, Consumer Project on Technology.


• For Appellees:
  
• Charles R. Hoffmann, Hoffmann & Baron LLP, of Syosset, NY, argued for plaintiff-appellee.   With him on the brief were Glenn T. Henneberger, and Anthony E. Bennett., Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Arlington, VA, argued for defendants-appellants.   With him on the brief were Charles L. Gholz, and Robert T. Pous. Of counsel on the brief was James B. Lampert, Hale and Dorr, LLP, of Boston, MA.