United States Federal Circuit

On remand from the US Supreme Court, plaintiff cannot rebut the presumption, that the filing of narrowing amendments for the two patents in suit surrendered all subject matter between the original claim limitations and the amended claim limitations, by demonstrating that the rationale underlying the narrowing amendments bore no more than a tangential relation to the accused equivalents, or by demonstrating that there was "some other reason" such that the patentee could not reasonably have been expected to have described the accused equivalents.

Appellate Information

• Decided 09/26/2003
• Published 09/26/2003

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.