Addressing the issue of whether prosecution history estoppel presumptively applies when an amendment narrows the scope of the original claim in response to patentability rejections, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s decision that prosecution history estoppel did not bar a finding of infringement under the doctrine of equivalents as a matter of law, a resulting finding of willful infringement and an award of attorneys’ fees. Integrated Technology Corp. v. Rudolph Technologies, Inc., Case Nos. 12-1593; -1618 (Fed. Cir., Nov. 4, 2013) (Moore, J.).
The systems at issue in the case are designed to test the probe cards used by semiconductor manufacturers to determine whether wafers are producing chips that meet a set of predetermined specifications. Integrated Technology Corporation (ITC) initially filed the suit in 2006 against Applied Precision and its acquirer, Rudolph Technologies, which made the disputed probe card testing systems. ITC alleged that two categories of Rudolph products infringed the asserted claims. The first were products where the probe tips make contact with the viewing window (contact products), which were argued to literally infringe. The second were products where the probes did not make contact with the viewing window (non-contact products), which were argued to infringe by equivalence.
The district court granted summary judgment of literal infringement as to the contact products. The parties proceeded to trial on three issues: whether Rudolph’s literal infringement with the contact products was willful, whether the non-contact products infringed by equivalence and damages. The jury returned a verdict of no willfulness as to the contact products, willful infringement as to the non-contact products and awarded damages for the contact and the non-contact products, which were trebled due to the willfulness finding. The court subsequently tacked on attorneys’ fees because it determined that the case was exceptional primarily due to Rudolph’s litigation misconduct as an indication that it lacked good faith basis for its defenses to infringement. Rudolph appealed.
On appeal, the Federal Circuit found that prosecution history estoppel presumptively applies when an amendment narrows the scope of the original claim in response to patentability rejections. Accordingly, the Court determined that the district court erred in finding that Rudolph’s testing products willfully infringed because ITC surrendered the territory between the original and issued claims, including the equivalent, when it narrowed the meaning of its patent during prosecution to cover products in which a probe touches the chips. The Court rejected ITC’s argument that the amendment was not narrowing and that the doctrine of equivalents should apply. The Federal Circuit determined that ITC did not meet its burden to prove that an exception to prosecution history estoppel applied.