Document Type
Article
Abstract
It is well-known proposition that foreign decisions relating to patentability have no bearing on U.S. patentability. For this reason, the prosecution history of a foreign patent may not be relevant to a patent infringement suit of a counterpart U.S. patent. Despite its potential irrelevance, some courts will admit evidence from a foreign prosecution history during litigation of a counterpart U.S. patent. Courts generally admit evidence from a foreign prosecution history in one of two contexts. Such evidence is either admitted during claim construction or when a court is considering the scope of equivalents available to a patentee.
This Article summarizes decisions in which the admissibility of evidence from a foreign prosecution history was at issue during litigation of a counterpart U.S. patent. Subsequently, it then discusses when the use of a foreign prosecution history is appropriate during claim construction and when it is appropriate during analysis under the doctrine of equivalents, what components of the foreign prosecution history should be used, and how much weight the evidence should be given. Specifically, this Article discusses how evidence from a foreign prosecution history can be used as extrinsic evidence, when necessary, during claim construction and infringement analysis under the doctrine of equivalents.
Recommended Citation
Elizabeth Cowan Wright,
Patently Irrelevant? Use of Foreign Prosecution History as Extrinsic Evidence During Litigation of a Counterpart U.S. Patent,
10 J. Tech. L. & Pol'y
(2005).
Available at: https://scholarship.law.ufl.edu/jtlp/vol10/iss1/1