Kemnetz: HW 03/30 - New Tek Mfg., Inc. v. Beehner

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  • Former client sues attorney for negligence in permitting client's patent to exprie.
  • District Court entered summary judgement in favor of attorney's estate and law firm
  • Client appeals
  • Supreme Court reversed and remanded
    • because the estate had not provided prima facie case of noninfringement under the doctrine of equivalents

(Prima facie denotes evidence that – unless rebutted – would be sufficient to prove a particular proposition or fact.)

  • Remand: the District Court again entered summary judgement in favor of attorney's estate and law firm
    • as a matter of law, the all-elements rule and prosecution history estoppel precluded the application of the doctrine of equivalents

(Estoppel: "a series of legal and equitable doctrines that preclude "a person from denying or asserting anything to the contrary of that which has, in contemplation of law, been established as the truth, either by the acts of judicial or legislative officers, or by his own deed, acts, or representations, either express or implied.")

  • Client appeals again
  • Supreme Court Holding:

"prosecution history estoppel would have barred the hypothetical patent infringement case upon which the client's damages claim was dependent"

The Case

New Tek Mfg claimed that former attorny (John H. Beehner) negligently allowed the patent on a device to lapse. The third party, Orthman Mfg, manufactured and sold a device that would have infringed on the patent under the doctrine of equivalents, if the patent had still been in effect.

The Patent

A "row following guidance device for a tractor-drawn row crop implement" designed to help operators of farm equipment guide implements through a crop field w/out accidentally deviating from the crop row (and therefore destroying planted crops).

  • Filed original patent April 24, 1985, patent issued on Feb. 3, 1987.
  • Patentee saw a potentially infringing device at a farm equip. show, so decided to broaden the patent
  • Files a reissue patent application on Dec. 14, 1987
  • New Tek obtained rights to patent in 1989
  • Beehner did not diligently pursue reissue patent application, or pay the maintenance fees for the original patent --> resulting in an expiration of the patent
  • Through different counsel, New Tek obtained reissue patent in Sept. 1992 BUT this was a defective patent b/c the original patent expired (New Tek unaware of this)
  • Ultimately New Tek was able to get the original patent revived, but the expanded scope in the reissue patent was not included, and they lost the benefit of these claims.

== New Tek Mfg., Inc. V. Beehner 275 Neb. 951, 751 N.W. 2d 135 Neb.,2008 June 27, 2008 ==

Doctrine of Equivalents Stuff

Question: whether the district court erred in concluding that New Tek could not establish infringement under the doctrine of equivalents (prevents a copyist from evading patent claims with insubstantial changes).

Court said: "the doctrine of equivalents does not require a 1-to-1 correspondence of components, and that the vantage point of one or ordinary skill in the relevant art provides the perspective for assessing the substantiality of the differences between the claim invention and the accused device".

Also said there was "no evidence that would permit a trier of fact to conclude, one way or the other, whether one of ordinary skill in the pertinent art would consider the difference between element 4, claim 22, of the ′080 patent and the corresponding structure of the Orthman device to be substantial, or whether the different structure of the Orthman device is merely an insubstantial change which adds nothing of significance to the structure disclosed in the ′080 patent specification."

"a device may infringe on a patent either literally or under the doctrine of equivalents. New Tek contends that had its patent not lapsed, the Orthman device would have infringed under the doctrine of equivalents. Under this judicially created doctrine, 'a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’**145 between the elements of the accused product or process and the claimed elements of the *961 patented invention.' "

  • recognized danger that broad application of the doctrine would "conflict with the definitional and public-notice functions of the statutory claiming requirement under federal patent law.
  • it is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as the effectively eliminate that element in its entirety.

Determining if the patent is infringed under the doctrine of equivalents:

Limited by 2 primary legal doctrines:

  1. prosecution history estoppel

a public record of the patentee's representations about the scope and meaning of the claims. competitors must rely on these when determining what is legal (designing around claimed invention)

  1. all-elements rule

cannot apply of the DoE if applying it vitiates an entire claim limitation. --> an accused product does not infringe unless it contains EACH limitation of the claim

when the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent.

The amended patent application cancelled the original claim b/c the patent examiner rejected the original application based in part upon prior art.

Was the literal scope of the claim narrowed by the amendment? --> canceling the original claim was an amendment that narrowed the claim.