Is prosecution history estoppel an affirmative defense?

The court held that “prosecution history estoppel is only applicable where the doctrine of equivalents has been raised as a means of constructing an infringement claim,” and thus “prosecution history estoppel is not an affirmative defense.” Id. at 1774.

What are the reasons for the doctrine of equivalents and prosecution history estoppel?

A prosecution history may limit a range of infringement available under the doctrine of equivalents. Prosecution history estoppel prevents a patentee from using the doctrine of equivalents to recapture subject matter surrendered during prosecution from the literal scope of a claim.

What does the doctrine of equivalents do?

The doctrine of equivalents is a legal rule in patent law whereby a party can be liable for infringement even though the party does not literally or precisely infringe every limitation of a patent claim.

What is prosecution history meaning?

Noun. prosecution history (plural prosecution histories) (US, law) The record of the examination of a patent application, including the original application, responses made by the examiner, and amendments made by the applicant to address objections raised by the examiner.

What is the prosecution history of a patent?

In the U.S., a prosecution history of a patent (i.e., the proceedings between the patent applicant and the USPTO from application filing to patent issuance) comes into play in the context of claim construction (for example, before a district court, before the PTAB in a post-grant proceeding, or in the eyes of a third …

What is pith and marrow?

The doctrine of pith and marrow is the doctrine that has been applied in English patent law for over a century to see whether there was an infringement of a patent where the product or process or device or apparatus alleged to constitute an infringement did not exactly or precisely fall within the text of the relevant …

What is patent estoppel?

“Estoppel” in patent law is a legal term meaning that a second argument is barred if it is inconsistent with a first argument. In a patent context, it bars an inventor from admitting something to the Patent and Trademark Office and later contradicting that admission, whether before the PTO or before a court.

What is Gillette Defence?

Gillette defence The defence is based on an early 1900s decision from the House of Lords and allows the defendant to plead that their alleged infringing actions are part of the prior art, and thus either the patent is invalid for claiming the prior art or if the patent is valid, the defendant does not infringe.

What is the criminal prosecution system?

Prosecution. The prosecution is the agency which plays an intermediary role between the judiciary and the police. It is they who take the police”s case forward to the courts.