United States
Court of Appeals for the Federal Circuit | [1] Case No.: 2007-1063, -1141, -1165 [2] Case Name: INTERNATIONAL RECTIFIER V. IXYS |
| [3] Date of Decision: February 11, 2008 |
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| [4] PROSECUTION HISTORY ESTOPPEL PRECLUDED A DOCTRINE OF EQUIVALENTS CLAIM RELIED UPON AT TRIAL EVEN WHERE THE PURPOSE OF AN AMENDMENT WAS TO BROADEN THE SCOPE OF THE CLAIM. | [6] Key Words: Prosecution History Estoppel, Disclaimer |
| [5] Patent No(s).: U.S. Patent Nos. 4,959,699 (“the ’699 patent”), 5,008,725 (“the ’725 patent”), and 5,130,767 (“the ’767 patent”) | [7] Case Link:
http://www.cafc.uscourts.gov/opinions/07-1063.pdf |
Procedural Background: | Summary of the Case: |
IXYS Corporation appealed a jury verdict of infringement following remand and a jury trial. 
| IXYS Corporation appealed a jury verdict of infringement following remand and a jury trial. Each of the asserted patents disclose metal-oxide-semiconductor field effect transistors (MOSFETs).
The Court began addressing a question of jurisdiction triggered by IXYS not filing a properly styled notice of appeal within the required time period. IXYS did, however, file a motion to stay the permanent injunction pending appeal. The Court found jurisdiction by determining that the motion to stay qualified as a notice of appeal. Specifically, the Court noted that if a document filed within the time specified by Rule 4 gives the notice required by Rule 3, it is effective as a notice of appeal.
On the question of infringement, the Court first addressed the question of whether prosecution history estoppel precluded a doctrine of equivalents claim relied upon at trial. The Court first noted that notwithstanding an amendment broadening as compared to narrowing a pending claim, the addition of a term in so doing can serve the purpose of narrowing a component of the claim and thereby serve as the basis for prosecution history estoppel. The effect of this added term had the additional impact of defeating the patentees claim that the amendment was tangential to the allowance of the claim. The addition of this term assisted the patentee in overcoming a Section 112 rejection and it cannot offer an after-the-fact analysis that it could have overcame the rejection in some other manner.
The remaining issues of infringement were disposed of based on the explicit holding of the Court in its previous treatment of the case. Specifically, that a particular limitation read into the claims during the first round of appeals necessarily implied that such limitations should be read into each of the asserted patents.
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