Heuft Systemtechnik GMBH v. Industrial Dynamics Co., Ltd. (Fed. Cir. June 25, 2008)
Heuft Systemtechnik designs, manufactures and sells equipment used in bottling plants. It owns U.S. Patent No. 6,155,408 (the ’408 patent) and its divisional, U.S. Patent No. 6,298,974 (the ’974 patent), both directed to a method and apparatus for rotating rotationally symmetrical containers, such as bottles, while transporting them under backup pressure. (See Figures 1 and 2 below.) This technology relates generally to the handling and inspection of aligned bottles 10 for defects and debris. As bottles travel along rails 14, and 15, they spread laterally 26, 28, to slow down the progression of the bottles 10 in angle of vision of the camera 20.
In 2005, several years after the issuance of both patents, Heuft sued IDC for patent infringement of these patents. The parties stipulated to the dismissal with prejudice of all claims under the ’408 patent, leaving only the ’974 patent in suit. During the prosecution of the parent ’408 patent, Heuft made several arguments to overcome a rejection over International Patent Publication No. WO83/00135. Later, all claims of the ’974 patent were issued without rejection.
During the claim construction phase of the suit, the District Court rejected IDC’s argument that Heuft was bound by the doctrine of prosecution disclaimer in the ’974 patent due to arguments made during the prosecution of the ’408 patent. IDC argued that the term “arranging” found in the claims could not include angles disclaimed during the earlier parent prosecution. Figure 2
In the parent, Heuft (1) attempted to amend the ’408 specification indicating that “the critical features of the invention are the distance between the railings and above all the angle β at which that distance narrows down,” (2) amended all claims to require an exit angle between 30° to 100° at the guiderails and (3) filed a request for continued examination directed to the geometry of the guiderails. IDC argued that exit angles of less than 30° could not be claimed in the divisional even if this limitation was not in the file history.
Prosecution disclaimer occurs when a patentee, either through argument or amendment, surrenders claim scope during the course of prosecution. Amendments or arguments that are merely vague, ambiguous or subject to other reasonable interpretation are not sufficient to surrender claim scope. Rather, in order for prosecution disclaimer to attach, the patentee’s actions must be “clear and unmistakable.” The Federal Circuit found the actions of Heuft to be unmistakable. Angle limitations were added during prosecution to all claims to overcome rejections under 35 U.S.C. §§ 102 and 103. Remarks also distinguished the cited art based on exit angles.
The Federal Circuit confirmed that prosecution disclaimer may arise from disavowals made during the prosecution of parent patent applications. Thus, the issue is whether the disclaiming statements Heuft made with respect to the ’408 patent related to the same subject matter at issue in the ’974 patent. The court used charts to compare the claimed language of the ’408 patent at different stages of prosecution and found the terms at issue to be similar and related to the claims of the ’974 patent.