Communications Sys. V Kostelnik, 2007 US Dist. LEXIS 85879
Decided November 20, 2007
Facts: With the onset of cable companies providing telephone service, Mr. Kostelnik, an individual inventor, identified a need for a device akin to a phone jack that could facilitate a telephone connection to the phone company, or alternately, a connection to the cable company without having to rewire the jack. Kostelnik invented this device, which presumably looked like a regular telephone jack but with two jack connections, one to the telephone company and one to the cable service provider, and a jumper cable that could plug into either one, depending on the source of the service.
Kostelnik’s first claim 1 described the jack and a “toggling means†that was later defined in claim 2 as comprising of an electric connection the by way of a jumper cable. The PTO rejected all his claims as being anticipated by prior art. The PTO stated that claim 2 would be patentable if it was rewritten in independent form. Kostelnik then accordingly amended his claim 2 to make it independent of the rejected claim 1 and thus limited his invention to include a jumper cable as its toggling means. The patent was approved and issued.
PH: In May of 2006, Kostelnik wrote Communications Sys. a letter stating that its dual provider switch jacks (using a switch to accomplish the same function Kostelnik’s jumper cable accomplished) were infringing his invention and demanding a licensing fee and royalties. Communications Sys. then filed this action for a declaratory judgment of noninfringement and invalidity of Kostelnik’s patent. Kostelnik argues that by the doctrine of equivalents, Comm. Sys.’s products infringe his patent. Comm. Sys., the plaintiff maintains that because Kostelnik narrowed his claim, prosecution history estoppel applies and precludes the current complaint.
Issues: The court cites Warner-Jenkinson in explaining that prosecution history estoppel applies to estop a doctrine of equivalents argument when the patentee specifically bypassed a rejection by amending his claim to exclude the equivalent subject matter. The court goes on to cite Festo Corp. v. Shoketsu, 344 F.3d 1359, 1366 (Fed. Cir. 2003), “If the amendment is a narrowing amendment, then the Court must undertake a second inquiry. …. The Court must determine whether the amendment was substantial and related to patentability.†There is a rebuttable presumption of a relation to patentability that will warrant prosecution history estoppel. Kostenik has the burden of showing another reason for the narrowing to overcome the estoppel. If he can overcome this presumption, the court would then decide what exactly he surrendered by narrowing the claim.
There is another presumption—the Festo presumption—that he surrendered everything between the original claim and the amended. To overcome the Festo presumption, Kostelnik must show that the equivalent would have been unforeseeable at the time of the amendment, that the rationale behind the narrow amendment had nothing more than a “tangential relationship†to the equivalent, OR that a PHOSITA could not have been expected to draft a claim encompassing the equivalent at the time of the amendment.
Discussion: Kostelnik argues that he overcomes the Festo presumption because the rationale underlying the narrowing amendment is only tangentially related to his jumper cable limitation. Comm. Sys. argues that since Kostelnik never gave a reason for the narrowing amendment, and that the only assumable reason for doing so was to specify the toggling means to avoid prior art, which he did by describing the jumper cable and thus surrendering any claim of equivalents to the switch.
Holding: The court holds that Kostelnik’s arguments are not sufficient to overcome the Festo presumption that he surrendered all other toggling means besides the jumper cable when he narrowed his claim. His rationale is not objectively apparent and thus could not even really overcome the initial presumption. Even if he could, the court holds, the fact that the jumper cable is the specified means for toggling between the phone and cable services is certainly not a tangential matter to the invention.
Comm. Sys.’s Partial Motion fo Summary Judgment is Granted.
Decided November 20, 2007
Facts: With the onset of cable companies providing telephone service, Mr. Kostelnik, an individual inventor, identified a need for a device akin to a phone jack that could facilitate a telephone connection to the phone company, or alternately, a connection to the cable company without having to rewire the jack. Kostelnik invented this device, which presumably looked like a regular telephone jack but with two jack connections, one to the telephone company and one to the cable service provider, and a jumper cable that could plug into either one, depending on the source of the service.
Kostelnik’s first claim 1 described the jack and a “toggling means†that was later defined in claim 2 as comprising of an electric connection the by way of a jumper cable. The PTO rejected all his claims as being anticipated by prior art. The PTO stated that claim 2 would be patentable if it was rewritten in independent form. Kostelnik then accordingly amended his claim 2 to make it independent of the rejected claim 1 and thus limited his invention to include a jumper cable as its toggling means. The patent was approved and issued.
PH: In May of 2006, Kostelnik wrote Communications Sys. a letter stating that its dual provider switch jacks (using a switch to accomplish the same function Kostelnik’s jumper cable accomplished) were infringing his invention and demanding a licensing fee and royalties. Communications Sys. then filed this action for a declaratory judgment of noninfringement and invalidity of Kostelnik’s patent. Kostelnik argues that by the doctrine of equivalents, Comm. Sys.’s products infringe his patent. Comm. Sys., the plaintiff maintains that because Kostelnik narrowed his claim, prosecution history estoppel applies and precludes the current complaint.
Issues: The court cites Warner-Jenkinson in explaining that prosecution history estoppel applies to estop a doctrine of equivalents argument when the patentee specifically bypassed a rejection by amending his claim to exclude the equivalent subject matter. The court goes on to cite Festo Corp. v. Shoketsu, 344 F.3d 1359, 1366 (Fed. Cir. 2003), “If the amendment is a narrowing amendment, then the Court must undertake a second inquiry. …. The Court must determine whether the amendment was substantial and related to patentability.†There is a rebuttable presumption of a relation to patentability that will warrant prosecution history estoppel. Kostenik has the burden of showing another reason for the narrowing to overcome the estoppel. If he can overcome this presumption, the court would then decide what exactly he surrendered by narrowing the claim.
There is another presumption—the Festo presumption—that he surrendered everything between the original claim and the amended. To overcome the Festo presumption, Kostelnik must show that the equivalent would have been unforeseeable at the time of the amendment, that the rationale behind the narrow amendment had nothing more than a “tangential relationship†to the equivalent, OR that a PHOSITA could not have been expected to draft a claim encompassing the equivalent at the time of the amendment.
Discussion: Kostelnik argues that he overcomes the Festo presumption because the rationale underlying the narrowing amendment is only tangentially related to his jumper cable limitation. Comm. Sys. argues that since Kostelnik never gave a reason for the narrowing amendment, and that the only assumable reason for doing so was to specify the toggling means to avoid prior art, which he did by describing the jumper cable and thus surrendering any claim of equivalents to the switch.
Holding: The court holds that Kostelnik’s arguments are not sufficient to overcome the Festo presumption that he surrendered all other toggling means besides the jumper cable when he narrowed his claim. His rationale is not objectively apparent and thus could not even really overcome the initial presumption. Even if he could, the court holds, the fact that the jumper cable is the specified means for toggling between the phone and cable services is certainly not a tangential matter to the invention.
Comm. Sys.’s Partial Motion fo Summary Judgment is Granted.