Intermatic Inc. v. Lamson & Sessions Co.
Docket: Nos. 00-1101, 00-1116, 01-1028
Court: Court of Appeals for the Federal Circuit; March 16, 2003; Federal Appellate Court
The Supreme Court has remanded consolidated cases involving Intermatic Inc. and Lamson Sessions Co. for further consideration based on its decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (Festo II), which vacated the earlier ruling in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (Festo I). The court recalled its mandate following its December 2001 decision (Intermatic III) and ordered new briefing on the application of Festo II to the prosecution history estoppel issues in these cases. In the first case (Intermatic I), a jury awarded damages to Intermatic for infringement based on Lamson's "ribbed" product, but the court later denied Lamson's post-trial motion to overturn this verdict, citing insufficient evidence for equivalence and prosecution history estoppel. The appellate court reversed the infringement verdict, applying the complete bar established by Festo I regarding narrowing amendments, without addressing Lamson's other arguments on appeal. In the second case (Intermatic II), the district court granted summary judgment that Lamson's "ribless" product did not infringe Intermatic's patent, citing prosecution history estoppel as the basis for its decision. The appellate court affirmed this ruling, similarly relying on Festo I’s complete bar. Given that Festo II introduces a new framework for analyzing prosecution history estoppel, which differs from previous applications by both the district court and the appellate court, the court has vacated the earlier decisions in Intermatic III, as well as the district court’s decisions in Intermatic I and II. The case is remanded for further proceedings where the district court must apply the criteria established in Festo II regarding prosecution history estoppel, among other considerations.