United States Court of Appeals for the Federal Circuit
04-1013
ALFRED SALAZAR,
Plaintiff-Appellant,
v.
PROCTER & GAMBLE COMPANY,
Defendant-Appellee.
Henry C. Su, Fenwick & West LLP, of Mountain View, California, argued for
plaintiff-appellant. With him on the brief were Brenda M. Simon and Kent Kemeny.
Charles J. Faruki, Faruki Ireland & Cox P.L.L., of Dayton, Ohio, argued for
defendant-appellee. With him on the brief was Thomas R. Kraemer.
Appealed from: United States District Court for the Northern District of Oklahoma
Senior Judge H. Dale Cook
United States Court of Appeals for the Federal Circuit
04-1013
ALFRED SALAZAR,
Plaintiff-Appellant,
v.
PROCTER & GAMBLE COMPANY,
Defendant-Appellee.
___________________________
DECIDED: July 8, 2005
___________________________
Before RADER, BRYSON, and GAJARSA, Circuit Judges.
Opinion for the court filed by Circuit Judge RADER. Dissenting opinion filed by Circuit
Judge BRYSON.
RADER, Circuit Judge.
Alfred Salazar owns U.S. Patent No. 5,535,474 (’474 patent) for a toothbrush
having polishing rods that clean and polish the teeth and stimulator rods that stimulate
the gums during brushing. ’474 patent, Abstract. Salazar, acting pro se, sued Proctor &
Gamble Co. (Proctor & Gamble) for infringement of the ’474 patent. Proctor & Gamble
moved for summary judgment because its toothbrushes do not include the “elastic”
feature of claim 1, the only independent claim of the ’474 patent. On September 8,
2003, the district court issued an order construing the “elastic” limitation and granting
summary judgment to Proctor & Gamble because its products do not infringe literally or
under the doctrine of equivalents. Salazar v. Procter & Gamble Co., No. 02-CV-590-C
(N.D. Okla. Sept. 8, 2003) (Order). Because the district court erred in using the patent
examiner’s Reasons of Allowance to exclude nylon from the scope of the claim term
“elastic,” this court vacates the grant of summary judgment and remands.
I
Mr. Salazar submitted U.S. Patent Application No. 409,149 (’149 application) on
March 23, 1995, which eventually matured into the ’474 patent. The ’474 patent claims a
toothbrush with, inter alia, elastic stimulator rods and elastic polishing rods that extend
above the bristles of the brush. ’474 patent, col. 5, l. 30 – col. 6, l. 23. The ’149
application initially contained an independent claim 1 and five dependent claims. Claim
2 of the ’149 application depended from claim 1; and claim 3 from claim 2. The examiner
rejected claim 1 as obvious over U.S. Patent No. 3,072,944 (issued Jan. 15, 1963) to
Clayton (Clayton) in light of U.S. Patent No. 3,103,679 (issued Sept. 17, 1963) to
Clemens (Clemens). The examiner objected to claims 2 and 3 as allowable subject
matter dependent upon a rejected base claim.
The applicant responded by canceling claims 1-3 and introducing a new claim 7
based on the allowable subject matter of claim 3. The examiner allowed claim 7 without
rejection,1 which issued as claim 1 of the ’474 patent. In the Notice of Allowance, the
examiner made the following remarks in the Examiner’s Statement of Reasons for
Allowance:
Claim 7 now incorporates previously held allowable subject matter . . . .
Although the patent to Clemens appears to have the recited structure,
Clemens’ “rods” 22 are made of nylon, which is not considered “elastic”.
Obviously the “rods” of Clemens are flexible, but are not considered to be
“elastic” as recited by the claim.
1
Although claim 7 was not rejected, the examiner made amendments to
claim 7 not pertinent to this appeal.
04-1013 2
The applicant did not respond to these remarks by the examiner. The ’474 patent issued
with claim 7 renumbered as claim 1.
Mr. Salazar sued Procter & Gamble alleging infringement of certain claims of the
’474 patent. Procter & Gamble filed a motion for summary judgment of no infringement
either literally or under the doctrine of equivalents. Proctor & Gamble contended that the
stimulator and polishing rods in its products are not “elastic” as required by claim 1. The
district court construed the term “elastic” and granted Procter & Gamble’s motion for
summary judgment. Order at 5 & 7. Specifically, the district court construed the term
“elastic” as “any material other than nylon, capable of returning to an initial state or form
after deformation.” Order at 5 (internal quotation and citation omitted).
The district court granted summary judgment of no infringement because Mr.
Salazar did not present sufficient evidence to raise an issue of fact about the elasticity of
the stimulator and polishing rods in the accused products. Id. at 7. Thus, the district
court concluded that the accused products did not fall within the court’s interpretation of
the claim term “elastic.” Id. The district court also found that the doctrine of prosecution
history estoppel barred Mr. Salazar from asserting infringement of the “elastic” limitation
under the doctrine of equivalents. Id. at 6. Mr. Salazar appeals.
II.
A determination of infringement requires a proper interpretation of the scope and
meaning of the claim followed by a comparison of the accused product to that claim
scope. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003);
Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993). In
the context of a grant of summary judgment of no infringement, this court reviews the
04-1013 3
entire infringement inquiry without deference. Omega Eng’g, 334 F.3d at 1320.
“Summary judgment is therefore appropriate when there is no genuine issue of material
fact or when, drawing all factual inferences in favor of the nonmoving party, no
‘reasonable jury could return a verdict for the nonmoving party.’” Id. (citing Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)).
In construing claims, “[t]his court . . . considers the prosecution history to
determine whether the applicant clearly and unambiguously disclaimed or disavowed
any interpretation during prosecution in order to obtain claim allowance.” 3M Innovative
Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003) (internal
quotations and alterations omitted); accord Omega Eng’g, 334 F.3d at 1324; Middleton,
Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002); Standard Oil Co.
v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
The doctrine of prosecution history estoppel serves to limit the doctrine of
equivalents when the applicant makes a narrowing amendment for purposes of
patentability, or clearly and unmistakably surrenders subject matter by arguments made
to the examiner. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S.
722, 736 (2002) (narrowing amendment for purposes of patentability); Eagle Comtronics,
Inc. v. Arrow Communication Labs., Inc., 305 F.3d 1303, 1316 (Fed. Cir. 2002)
(argument-based estoppel); Elaky Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed.
Cir. 1999) (argument-based estoppel).
The first and only time the examiner discussed the “elastic” limitation was in the
Examiner’s Statement of Reasons for Allowance. The examiner did not at any time
reject a claim of the ’149 application containing the “elastic” limitation as anticipated or
04-1013 4
obvious in view of the prior art.2 Other than the remarks in the Examiner’s Statement of
Reasons for Allowance, the prosecution history does not contain any discussion of the
“elastic” limitation by either the examiner or the applicant. Nonetheless, the district court
excluded nylon from the scope of “elastic.” Order at 5. Specifically, the district court
found that the remarks in the Examiner’s Statement of Reasons for Allowance “amended
the claim specifically to exclude nylon from the definition of ‘elastic.’” Id. Thus, this
appeal requires this court to decide whether unilateral statements of an examiner in
stating reasons for allowance can create a clear and unambiguous disavowal of claim
scope and give rise to prosecution history estoppel.
The regulations in force during the prosecution of the ’149 application state:
If the examiner believes that the record of the prosecution as a whole
does not make clear his or her reasons for allowing a claim or claims, the
examiner may set forth such reasoning. The reasons shall be
incorporated into an office action rejecting other claims of the application
or patent under reexamination or be the subject of a separate
communication to the applicant or patent owner. The applicant or patent
owner may file a statement commenting on the reasons for allowance
within such time as may be specified by the examiner. Failure to file such
a statement shall not give rise to any implication that the applicant or
patent owner agrees with or acquiesces in the reasoning of the examiner.
37 C.F.R. § 1.109 (1996) (emphasis added).3 These regulations offer the applicant an
opportunity to respond to the examiner’s unilateral reasons for allowance. The
regulations also state, however, that the applicant does not acquiesce in those reasons if
the applicant declines to respond.
2
Claims of the ’149 application containing the “elastic” limitation were
rejected by the examiner for reasons not pertinent to this appeal.
3
37 C.F.R. § 1.109 has since been amended and now appears at 37 C.F.R.
§ 1.104(e) (2003).
04-1013 5
This court has recognized that an Examiner’s Statement of Reasons for
Allowance “will not necessarily limit a claim.” ACCO Brands, Inc. v. Micro Sec. Devices,
Inc., 346 F.3d 1075, 1079 (Fed. Cir. 2003). Consequently, an applicant’s silence
regarding statements made by the examiner during prosecution, without more, cannot
amount to a “clear and unmistakable disavowal” of claim scope. See 3M Innovative
Props., 350 F.3d at 1373-74 (“‘Prosecution history . . . cannot be used to limit the scope
of a claim unless the applicant took a position before the PTO.’ Schwing GmbH v.
Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324-25 (Fed. Cir. 2002) (emphasis
added). An applicant’s silence in response to an examiner’s characterization of a claim
does not reflect the applicant’s clear and unmistakable acquiescence to that
characterization if the claim is eventually allowed on grounds unrelated to the examiner’s
unrebutted characterization.”). After all, the applicant has disavowed nothing.
Procter & Gamble concedes that the law precludes drawing inferences from an
applicant’s decision to decline comment on an Examiner’s Statement of Reasons for
Allowance, yet argues that Mr. Salazar should be bound by “the message he sent to the
public” by his silence.
Procter & Gamble supports its position with this court’s language that, on its face,
appears to support Procter & Gamble. However, a closer inspection of those cases
reveals that Procter & Gamble either cites to dicta or to cases addressing issues
different from this case. Procter & Gamble first quotes TorPharm Inc. v. Ranbaxy
Pharmaceuticals, Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003):
Whether the patentee chooses to dispute the examiner’s view of matters
is relevant to claim interpretation, for there a court may need to ascertain
exactly what subject matter was actually examined and allowed by the
PTO. Patent examination would serve little purpose unless the scope of
04-1013 6
the exclusive patent right correlated with the matter allowed by the PTO.
Accordingly, in ascertaining the scope of an issued patent, the public is
entitled to equate an inventor’s acquiescence to the examiner’s narrow
view of patentable subject matter with abandonment of the rest. Such
acquiescence may be found where the patentee narrows his or her claims
by amendment, or lets stand an examiner’s restrictive interpretation of a
claim.
(internal citations omitted) (emphases supplied by Procter & Gamble). TorPharm
addresses a different issue from that before this court. In TorPharm, the applicant added
limitations to claims to overcome an obviousness rejection. Later during litigation, the
defendant discovered and showed that the added limitation was also in the prior art. The
defendant asserted that the patentee had acquiesced in the obviousness of its invention
by amending its claims. Therefore, according to the defendant, the patentee could not
challenge its obviousness contentions. This court in TorPharm held that the applicant’s
“acquiescence” in the obviousness rejection by amending its claims did not preclude the
patentee from contesting obviousness in litigation. Id. at 1331. Thus, TorPharm does
not hold that a patentee’s silence in the face of an examiner’s unilateral statements in a
Notice of Allowance amounts to a clear disavowal of claim scope.
Procter & Gamble next quotes the following passage from Inverness Medical
Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1372 (Fed. Cir.
2002):
[E]ven where the ordinary meaning of the claim is clear, it is well-
established that the prosecution history limits the interpretation of claim
terms so as to exclude any interpretation that was disclaimed during
prosecution. A broader definition may be disclaimed, for example, where
the examiner adopts a narrow definition and the applicant does not object.
(internal quotations and citations omitted). This broad language, however, is merely
dicta. Inverness actually rejected the appellee’s argument that a statement in the
04-1013 7
examiner’s Reasons for Allowance governed the construction of the claim term at issue.
Id. at 1373.
Moreover, the cited quotations from both TorPharm and Inverness rely on Elkay.
In Elkay, the examiner rejected some claims in the application for obviousness. 192
F.3d at 978. In response, the applicant did not substantially amend the claims, but
overcame the rejection by arguing around the prior art cited by the examiner. Id. At trial,
the patentee discounted its own prosecution arguments that had overcome the
examiner’s obviousness rejection. The patentee sought to show that those arguments
were insignificant and should not provide a basis to narrow the scope of the claims. Id.
at 979. This court rejected the patentee’s argument. In crediting the applicant’s
narrowing arguments during prosecution, this court noted that the examiner expressly
accepted those arguments in the Statement of Reasons for Allowance. Id. Thus, Elkay
holds that the Examiner’s Statement of Reasons for Allowance may help show that the
applicant’s own arguments during prosecution constitute a clear disavowal of claim
scope. See also Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1207 (Fed. Cir. 1992)
(holding that a patentee acquiescing in an examiner’s rejection of a broad claim by filing
narrower claims cannot later regain the broader scope previously abandoned); ACCO
Brands, 346 F.3d at 1079 (relying on comments made in an Examiner’s Statement for
Reasons of Allowance to limit claim scope because “in this case the examiner simply
repeated the arguments that the patentee had presented”).
In sum, Procter & Gamble does not present any case law that stands for the
proposition that an examiner’s unilateral statements in a Notice of Allowance constitute a
clear and unambiguous disavowal of claim scope. Once again, the applicant has
04-1013 8
disavowed nothing. This court refuses to create a rule or presumption that the applicant
in this case disavowed claim scope by silence.
Procter & Gamble admits that Mr. Salazar was not required to answer the
examiner’s statement, but argues that “it does not follow that the patent examiner’s
comments then should be ignored.” Although unilateral statements by an examiner do
not give rise to a clear disavowal of claim scope by an applicant, it does not necessarily
follow that such statements are not pertinent to construing claim terms. Statements
about a claim term made by an examiner during prosecution of an application may be
evidence of how one of skill in the art understood the term at the time the application was
filed. However, as explained above, an applicant’s silence regarding such statements
does not preclude the applicant from taking a position contrary to the examiner’s
statements when the claim terms are construed during litigation.
The district court relied upon the same remarks in the Examiner’s Statements for
Reasons of Allowance to find that prosecution history estoppel bars Mr. Salazar from
asserting infringement of the “elastic” element under the doctrine of equivalents. Order
at 6-7. Although the claim language was not altered in response to the examiner’s
remarks in the Examiner’s Statement for Reasons of Allowance, the district court found
that the examiner’s remarks “amended” the “elastic” element of the claim. Id. at 7.
However, as previously discussed, this court finds that the examiner’s unilateral remarks
did not alter the scope of the claim.4 An examiner’s statement cannot amend a claim.
4
The parties do not dispute that introducing claim 7 based on the allowable
subject matter of dependent claim 3 of the ’149 application was not a narrowing
amendment for purposes of patentability and, therefore, does not by itself give rise to
prosecution history estoppel. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
04-1013 9
Consequently, the district court clearly erred in finding that claim 1 was “amended.”
Moreover, as the regulation and this court’s reasoning above discuss, the examiner’s
unilateral remarks alone do not affect the scope of the claim, let alone show a surrender
of claimed subject matter that cannot be recaptured under the doctrine of equivalents.
Thus, this court reverses the district court’s holding that prosecution history bars Mr.
Salazar from asserting infringement of the “elastic” element under the doctrine of
equivalents.
The parties only contest whether the applicant’s silence to the examiner’s remarks
in the Examiner’s Statements of Reasons for Allowance amounts to a clear disavowal of
claim scope as found by the district court. Because such statements do not amount to a
clear disavowal of claim scope by the applicant, this court vacates the portion of the
district court’s claim construction excluding nylon from falling within the scope of the
“elastic” element. This court affirms the remaining portion of the district court’s claim
construction that “elastic” means “capable of returning to an initial state or form after
deformation.” Whether the accused products satisfy the “elastic” limitation in the
asserted claims is a factual matter that this court leaves for the district court to resolve in
the first instance.
III
This court vacates the district court’s grant of summary judgment of no literal
infringement and no infringement under the doctrine of equivalents. The district court’s
claim construction excluding nylon from the scope of the “elastic” element is also
vacated. This court affirms the remaining portion of the district court’s claim construction
Co., 535 U.S. 722, 736 (2002) (stating that an amendment that is “truly cosmetic” does
not give rise to prosecution history estoppel).
04-1013 10
of “elastic.” This case is remanded to the district court for further proceedings consistent
with this opinion.
COSTS
Each party shall bear its own costs.
VACATED-IN-PART, AFFIRMED-IN-PART, and REMANDED
04-1013 11
United States Court of Appeals for the Federal Circuit
04-1013
ALFRED SALAZAR,
Plaintiff-Appellant,
v.
PROCTER & GAMBLE COMPANY,
Defendant-Appellee.
BRYSON, Circuit Judge, dissenting.
I respectfully dissent. The ’474 patent distinguishes between the stimulator rod
and the bristles that are mounted together in recessed sockets in the Salazar
toothbrush. It states that the bristles are typically “composed of conventional bristle
material such as nylon,” while the stimulator rod “is composed of an elastic material,
typically rubber or rubber substitute.” ’474 patent, col. 4, ll. 31-34. The patent thus
suggests that the stimulator rod and the bristles are made of different materials, which
contributes to the differences in their functions. In light of the disclosure in the patent, it
was unsurprising that the examiner understood the Salazar stimulator rods to be made
of a substance other than nylon, and that he based his distinction of the prior art
Clemens patent on that ground.
It is true that, in general, an inventor has no affirmative obligation to respond to
an examiner’s characterization of a claim. That is, an applicant is not bound by every
statement made by an examiner during the course of the prosecution unless the
applicant corrects the statement on the record. We have held, for example, that an
applicant’s silence in response to an examiner’s characterization of a claim “does not
reflect the applicant’s clear and unmistakable acquiescence to that characterization if
the claim is eventually allowed on grounds unrelated to the examiner’s unrebutted
characterization.” 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365,
1373-74 (Fed. Cir. 2003). In this case, however, the examiner’s statement related
directly to the ground on which the patent was issued. More importantly, the statement
is relevant not because it serves as the basis for a finding of disclaimer by the inventor,
but because it indicates how a person of ordinary skill in the art—in this instance, the
examiner—would understand the claim term “elastic” in the context of the patent. When
an applicant sits idly by while an examiner explains that he understands particular claim
language to have a particular meaning and only regards the invention as patentable
based on that meaning, the applicant should face a heavy burden in later challenging
the examiner’s interpretation. That principle is what I understand to underlie the court’s
statement in Torpharm, Inc. v. Ranbaxy Pharmaceuticals, Inc., 336 F.3d 1322, 1330
(Fed. Cir. 2003), that “an inventor’s acquiescence to the examiner’s narrow view of
patentable subject matter” may be found where the patentee “lets stand an examiner’s
restrictive interpretation of a claim.” The examiner’s statement in Elkay Manufacturing
Co. v. Ebco Manufacturing Co., 192 F.3d 973, 979 (Fed. Cir. 1999), is to the same
effect. There, the unresponded-to examiner’s statement was relevant because it
indicated that the examiner had relied on the patentee’s distinction of a prior art
reference in allowing the claim in suit. In this case, likewise, the examiner made clear
his understanding of the meaning of the term “elastic” as used in the patent; in that
04-1013 2
setting, and in light of the central importance of the examiner’s understanding of the
meaning of the term to his decision to allow the claims, the absence of any indication
that the patentee intended the claim term to be broader supports the district court’s
conclusion that the “elastic” stimulator rods should not be construed to include rods
made of nylon.
04-1013 3