About the Course
Introduction
This CLE course will guide patent litigators on prosecution history estoppel and when it applies. The panel will discuss the exceptions and the guidance provided by the courts in recent decisions. The panel will review strategies to avoid the presumption of estoppel while getting the desired claim allowed.
Description
Prosecution history estoppel can play an important role in patent litigation. Patent litigators must understand the scope of the estoppel as well as when it applies. The Supreme Court held that under the doctrine of equivalents, an accused product or process that does not literally include every limitation of an asserted patent claim can still infringe the claim if it includes an equivalent of the missing limitation. Warner-Jenkinson Co. v. Hilton Davis Chem Co. (1997).
The presumption of estoppel arises when a claim is amended to overcome a rejection. Once there is a presumption of estoppel it is difficult to overcome. For estoppel to be triggered, the claim amendment must have been made for the claim to be patentable and must narrow the claim. It is important to know when an amendment is considered to be narrowing.
The case law is complicated and not always clear. Counsel must understand how the courts have treated prosecution history estoppel and when the courts have allowed some claims.
Listen as our authoritative panel of patent attorneys examines prosecution history estoppel. The panel will discuss the exceptions when they apply and the courts' guidance in recent decisions. The panel will review strategies to avoid the presumption of estoppel while getting the desired claim allowed.
Presented By
As a Co-Chair of the firm’s Appellate Practice, Ms. Hughey is one of the firm’s appellate specialists. She is a former Federal Circuit law clerk, has handled dozens of appeals, and has argued before the Federal Circuit both as the appellant and the appellee. In addition, Ms. Hughey leverages her appellate experience by consulting on appellate cases throughout the firm, for other firms, and for her clients. As a thought leader, she writes extensively on current legal issues and is the author of a law review article on effective appellate advocacy before the Federal Circuit.
Mr. Jakes concentrates his practice on patent litigation and related counseling. He serves as lead counsel in federal district courts and the U.S. International Trade Commission (ITC), before arbitration panels, and on appeal to the U.S. Court of Appeals for the Federal Circuit. He deals mainly with computer, electronics, semiconductor, software, and medical device technologies. He has vast experience at the Federal Circuit, having argued more than 45 appeals and prepared and filed briefs in many more. He has served as both a special master and technical advisor to various U.S. district courts, assisting with claim construction and summary judgment motions on patents covering a wide variety of subjects.
Dr. Noonan is an experienced patent lawyer, molecular biologist and renowned thought leader in biotechnology and pharmaceutical patent law. Over the past 30 years, he has counseled some of the largest biotechnology and pharmaceutical companies in the world on intellectual property issues. Dr. Noonan helps these companies protect their innovations and advance business goals by developing effective patent portfolio strategies. His work includes helping companies develop global patent filing and prosecution strategies, evaluate litigation risks, and manage patent term extensions. Dr. Noonan also has successfully represented clients in numerous interference proceedings. He has filed amicus briefs in landmark cases involving pharmaceutical and biotechnology patent issues to district courts, the Federal Circuit and the U.S. Supreme Court. Dr. Noonan is the co-founder of and regular contributor to Patent Docs, a website featuring news and commentary on patent law. He is a co-editor and contributing author of the book, “Claim Construction and the Federal Circuit,” and a contributing author of “Antitrust Issues in Intellectual Property Law,” now in its second edition. He also regularly speaks about intellectual property issues at events around the world.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Thursday, May 27, 2021
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Prosecution history estoppel
- When it applies
- Limiting the use of equivalents to expand protection
- Exceptions
- Recent court treatment
- Best practices for avoiding or overcoming the presumption
The panel will review these and other important issues:
- What are the criteria for rebuttal of the presumption of estoppel?
- How have the courts addressed the application of prosecution history estoppel?
- What options are available to avoid the presumption of prosecution history estoppel?
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