New Patent-Related Cert. Petition

Amgen Inc. has recently filed this new cert. petition in the case of Amgen v. Hoechst Marion Roussel, Inc., et al. On appeal from the Court of Appeals for the Federal Circuit, the petition, docketed as 06-1291, raises two issues pertaining to patent law (full question presented after the jump).

Roy Englert, Jr. of Robbins, Russell, Englert, Orseck & Untereiner is counsel of record.

The Question Presented is:

In virtually every patent infringement case, federal district judges are called on to determine the scope of one or more claims in a patent. Such “claim construction” requires the judge to assess not only the state of the art and customary meaning of claim terms at the time of the invention, but also the contemporaneous meaning to a skilled practitioner of both the patent’s technical description of the invention and the patent applicant’s statements to the Patent and Trademark Office during the prosecution process. Many patent cases also include disputes over the “doctrine of equivalents,” a significant doctrine that prevents a copyist from avoiding liability “by making only insubstantial changes to a patented invention.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 727 (2002); Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997).

This case raises two questions concerning the administration of these important doctrines and the allocation of judicial authority between trial and appellate courts:

1. Are all aspects of a district court’s claim construction subject to de novo review, as the Federal Circuit has held despite vociferous criticism from numerous judges and commentators, or instead should the Federal Circuit have reviewed the factual determinations underlying the district court’s claim construction deferentially?

2. By restricting the ways in which a presumption of “prosecution history estoppel” may be rebutted, and engaging in de novo review of a district court’s determinations that the presumption has been rebutted, has the Federal Circuit effectively resurrected the categorical bar to a claim of infringement under the doctrine of equivalents that was expressly rejected in Festo and Warner-Jenkinson?