New Tek Mfg. v. Beehner

as the beneficiary. Such an order would have violated this state’s
public policy of requiring an insured’s consent to a policy on his
or her life. Although public policy concerns were not the reason
the district court overruled Mary Kay’s motion to compel Henry
to submit to a physical examination, a proper result will not be
reversed merely because it was reached for a different reason.13
The district court’s order is affirmed.
A ffirmed .
13 In re Trust Created by Cease, 267 Neb. 753, 677 N.W.2d 495 (2004).
N ew T ek mANufAcTuriNg , iNc ., A N ebrAskA corporATioN,
AppellANT, v . J ohN A. beehNer eT Al ., Appellees .
751 N.W.2d 135
Filed June 27, 2008. 	No. S-06-783.
1. Summary Judgment. Summary judgment is proper when the pleadings and evi-
dence admitted at the hearing disclose no genuine issue as to any material fact or as
to the ultimate inferences that may be drawn from those facts and that the moving
party is entitled to judgment as a matter of law.
2. Summary Judgment: Appeal and Error. In reviewing a summary judgment, an
appellate court views the evidence in a light most favorable to the party against
whom the judgment is granted and gives such party the benefit of all reasonable
inferences deducible from the evidence.
3. Judgments: Appeal and Error. When reviewing questions of law, an appellate
court has an obligation to resolve the questions independently of the conclusions
reached by the trial court.
4. Appeal and Error. Under the law-of-the-case doctrine, an appellate court’s hold-
ings on questions presented to it in reviewing the trial court’s proceedings become
the law of the case; those holdings conclusively settle, for the purposes of that
litigation, all matters ruled upon, either expressly or by necessary implication.
5. Actions: Appeal and Error. The law-of-the-case doctrine reflects the principle
that an issue which has been litigated and decided in one stage of a case should
not be relitigated in a later stage.
6. ____: ____. When an appellate court remands a case to an inferior tribunal, the
law-of-the-case doctrine prevents that court from taking action inconsistent with
the judgment of the appellate court.
Appeal from the District Court for Douglas County: pATriciA
A. lAmberTy, Judge. Affirmed.
NeW TeK MFg. v. BeeHNer 	951
Cite as 275 Neb. 951
Nebraska Supreme Court Online Library
www.nebraska.gov/apps-courts-epub/
11/01/2026 04:54 AM CST

952 	275 NeBrASKA reporTS
roger p. Cox and gregory D. Barton, of Harding & Shultz,
p.C., L.L.o., and roger D. greer and Steven p. Fallon, of greer,
Burns & Crain, Ltd., for appellant.
William H. Selde, of Sodoro, Daly & Sodoro, p.C., for
appellees.
heAvicAN, 	c.J., 	wrighT, 	coNNolly , 	gerrArd , 	sTephAN,
mccormAck , and miller -lermAN, JJ.
sTephAN, J.
This case is before us for the second time. It is a profes-
sional negligence action in which the plaintiff’s damage claim
is dependent upon the resolution of a hypothetical third-party
patent infringement claim. New Tek Manufacturing, Inc. (New
Tek), alleged that its former attorney, the late John H. Beehner,
negligently allowed its patent on a device to lapse and that it
was damaged when a third party, orthman Manufacturing, Inc.,
manufactured and sold a device which would have infringed
upon the patent under the doctrine of equivalents had the patent
remained in effect. In New Tek Mfg. v. Beehner (New Tek I),1
we reversed a summary judgment entered in favor of Beehner’s
estate (the estate) and remanded the cause to the district court
for Douglas County for further proceedings, based upon our
determination that the estate had not presented a prima facie
case of noninfringement under the doctrine of equivalents.
Following remand, the district court again entered summary
judgment in favor of the estate, determining as a matter of
law that the all-elements rule and prosecution history estoppel
precluded the application of the doctrine of equivalents. We
conclude that the district court did not err in determining that
prosecution history estoppel would have barred the hypothetical
patent infringement case and, therefore, affirm.
I. BACKgroUND
1. fAcTs ANd procedurAl hisTory
We set forth the following summary of pertinent facts and
procedural history in New Tek I:
1 New Tek Mfg. v. Beehner, 270 Neb. 264, 702 N.W.2d 336 (2005).

The patented device at issue in this case is a “row
following guidance device for a tractor-drawn row crop
implement,” designed to help operators of farm equipment
guide implements through a crop field without acciden-
tally deviating from the crop row and destroying planted
crops. As the patent explains, tractor-drawn farm imple-
ments may carry groundworking tools spaced as close as
4 inches apart, and a tractor operator is generally situ-
ated in a cab located several feet above and forward of
the implement, so it can be difficult to view the actual
engagement of the tools with the ground. In an operation
such as cultivating, only a slight misalignment of the trac-
tor with the crop row may cause the implement to uproot
several rows.
The patented device was intended, generally, to be a
“row following guidance device” that connects the left
and right sides of the forward end of an implement to
the tractor, and adjusts the length of each left and right
connection so that the implement will follow a crop row
independently, even if the tractor deviates from the crop
row. A wheel, following the crop row, signals a steer-
ing valve upon any deviation from the alignment of the
implement with the crop row, and the steering valve cor-
rects the deviation by lengthening one of the connections
between the implement and the tractor and shortening the
other connection.
eugene Schmidt invented this “row following guid-
ance device” and assigned his rights to Sunco Systems,
Inc. (Sunco). A patent application was filed with the U.S.
patent and Trademark office (the patent office) on April
24, 1985, and patent No. 4,640,365 (the ’365 patent) was
issued on February 3, 1987. After Schmidt saw a poten-
tially infringing device at a farm equipment show, Sunco
decided to broaden the patent by filing a reissue patent
application on December 14, 1987.
In 1988, while the reissue patent application was pend-
ing, Sunco’s counsel retired from the practice of law and
recommended that Sunco retain Beehner. In 1989, New
Tek was formed to assemble farm equipment based on
NeW TeK MFg. v. BeeHNer 	953
Cite as 275 Neb. 951

954 	275 NeBrASKA reporTS
Sunco parts, and the rights for the ’365 patent and the reis-
sue patent application were assigned to New Tek.
For purposes of this appeal, New Tek’s allegations of
Beehner’s duties, and breach thereof, are not at issue. New
Tek alleged that Beehner was responsible for pursuing the
reissue patent application and maintaining the ’365 patent,
in part by ensuring that the maintenance fees for the ’365
patent were filed. However, Beehner did not diligently
prosecute the reissue patent application, nor did he pay
the maintenance fees for the ’365 patent, which became
due in August 1990. Beehner revived the reissue pat-
ent application pursuant to a petition filed on December
18, 1990, but did not take action with respect to the
’365 maintenance fee before the end of the maintenance
fee grace period, which expired on February 3, 1991.
Although this resulted in the expiration of the ’365 pat-
ent and rendered the reissue patent application defective,
Beehner continued prosecution of the reissue patent appli-
cation. eventually, New Tek lost patience with Beehner’s
prosecution of the reissue patent application and retained
new counsel.
The reissue patent application was eventually allowed,
and reissue patent No. 34,080 (the ’080 patent) was issued
on September 29, 1992. However, the ’080 patent was
defective because of the expiration of the ’365 patent, of
which New Tek was still unaware. on November 16, 1994,
New Tek’s counsel submitted the maintenance fee for the
’080 patent to the patent office but, on December 19, was
informed that the maintenance fee would not be accepted
because the ’080 patent had expired due to the failure to
timely pay the maintenance fee for the ’365 patent.
Ultimately, the patent office accepted New Tek’s peti-
tion for late payment of the ’365 maintenance fee, and
the ’365 patent was revived. However, New Tek lost the
benefit of the expanded scope of the ’080 patent—specifi-
cally, claim 22 of the ’080 patent, which was not contained
in the ’365 patent, and will be explained in more detail
below. Furthermore, the revival of the ’365 patent did not
afford New Tek protection from infringing uses that began

between the expiration of the patent and the acceptance of
the late maintenance fee.[2] . . .
New Tek filed suit against Beehner and his law office in
the district court on December 12, 1995, alleging profes-
sional negligence. Beehner died during the pendency of the
suit, and [the e]state was substituted . . . . After proceedings
unrelated to the issues presented in this appeal, the district
court held a “Markman hearing” pursuant to Markman v.
Westview Instruments, Inc.[3] . . . and entered an order con-
struing the ’080 patent for purposes of this litigation.
The [estate] then filed a motion for summary judg-
ment, which the court sustained. The parties had narrowed
their inquiry to a particular device made by orthman
Manufacturing, Inc. (the orthman device). The court deter-
mined as a matter of law that the orthman device would
not have been found to infringe on the ’080 patent. . . .
New Tek’s claim was dismissed to the extent that it relied
on allegations of hypothetical third-party infringement on
the ’080 patent, and New Tek voluntarily dismissed its
remaining claims so that it could proceed with this appeal
on the issue of infringement.4
2. N ew T ek I
In New Tek I, we first rejected the estate’s contention that
we lacked subject matter jurisdiction. We concluded that the
case did not arise under federal patent law within the meaning
of 28 U.S.C. § 1338(a) (2000), but, rather, was a professional
negligence action arising entirely under state law. We noted that
“the precise question is not whether orthman Manufacturing
infringed on the ’080 patent,” but, rather, “whether, absent
2 See 35 U.S.C. § 41(c)(2) at 754 (2000) (“[a] patent, the term of which has
been maintained as a result of the acceptance of a payment of a maintenance
fee . . . shall not abridge or affect the right of any person . . . who made,
purchased, offered to sell, or used anything protected by the patent . . .
after the 6-month grace period but prior to the acceptance of a maintenance
fee”).
3 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995),
affirmed 517 U.S. 370, 116 S. Ct. 1384, 134 L. ed. 2d 577 (1996).
4 New Tek I, supra note 1, 270 Neb. at 267-69, 702 N.W.2d at 342-44.
NeW TeK MFg. v. BeeHNer 	955
Cite as 275 Neb. 951

956 	275 NeBrASKA reporTS
Beehner’s negligence, New Tek would have been successful in
an infringement action against orthman.”5
Next, we rejected New Tek’s contention that the district court
erred in holding a “Markman hearing,” pursuant to Markman v.
Westview Instruments, Inc.,6 for the purpose of construing the
patent. We concluded that it was “well established that claim
construction is a question of law for a court to decide.”7 We
also determined that the district court did not err in construing
element 4, claim 22, of patent No. 34,080 (the ’080 patent) as
a means-plus-function element. And, we rejected New Tek’s
argument that the patent had intrinsic value recoverable even in
the absence of damages resulting from the loss of a potential
infringement action.
We then addressed the dispositive issue of whether the district
court erred in concluding as a matter of law that New Tek could
not establish infringement under the doctrine of equivalents,
which doctrine prevents a copyist from evading patent claims
with insubstantial changes.8 We stated that “[t]he doctrine of
equivalents does not require a one-to-one correspondence of
components”9 and that “[t]he vantage point of one of ordinary
skill in the relevant art provides the perspective for assessing the
substantiality of the differences between the claimed invention
and the accused device.”10 We noted that the district court had
determined that a substantial difference existed and that the
orthman device did not infringe on claim 22. The court
noted that claim 22 specifically described a “pivotal con-
nection” between each hydraulic cylinder in element 4 and
5 Id. at 272, 702 N.W.2d at 346.
6 Markman v. Westview Instruments, Inc., supra note 3.
7 New Tek I, supra note 1, 270 Neb. at 274, 702 N.W.2d at 347.
8 Valmont Industries, Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039 (Fed. Cir.
1993).
9 New Tek I, supra note 1, 270 Neb. at 281-82, 702 N.W.2d at 352, citing
Wiener v. NEC Electronics, Inc., 102 F.3d 534 (Fed. Cir. 1996), abrogated
on other grounds, Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448
(Fed. Cir. 1998).
10 Id. at 282, 702 N.W.2d at 352, citing Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004).

the elongated member and respective lever. The orthman
device, on the other hand, employs a single hydraulic cyl-
inder, directly mounted on the elongated member without
employing a pivotal connection. The court did not address
whether the single hydraulic cylinder of the orthman
device was equivalent to the two hydraulic cylinders recited
in claim 22 of the ’080 patent; rather, the court concluded
that the difference between a pivotal connection and direct
mount to the end of the hydraulic cylinder on the elongated
member was substantial.11
We concluded that determination of infringement under the
doctrine of equivalents is an issue of fact and that as the party
moving for summary judgment, the estate had not met its prima
facie burden to show that no genuine issue of material fact
existed and that it was entitled to judgment as a matter of law.
We noted that the estate’s expert provided “no . . . basis for a
finding of noninfringement” and that aside from the conclusory
opinion of New Tek’s expert that the device made by orthman
Manufacturing (the orthman device) infringed on the ’080 pat-
ent, there was
no evidence that would permit a trier of fact to conclude,
one way or the other, whether one of ordinary skill in the
pertinent art would consider the difference between ele-
ment 4, claim 22, of the ’080 patent and the correspond-
ing structure of the orthman device to be substantial, or
whether the different structure of the orthman device is
merely an insubstantial change which adds nothing of
significance to the structure disclosed in the ’080 pat-
ent specification.12
We concluded that “[t]he defect in the [estate’s] motion for
summary judgment was its failure to present evidence regard-
ing the perspective of one of ordinary skill in the relevant art.”13
We also determined that “[t]he district court erred in construing
11 New Tek I, supra note 1, 270 Neb. at 282, 702 N.W.2d at 352-53.
12 Id. at 283-84, 702 N.W.2d at 353-54, citing Ishida Co., Ltd. v. Taylor, 221
F.3d 1310 (Fed. Cir. 2000).
13 Id. at 284, 702 N.W.2d at 354, citing Lighting World, Inc. v. Birchwood
Lighting, Inc., supra note 10.
NeW TeK MFg. v. BeeHNer 	957
Cite as 275 Neb. 951

958 	275 NeBrASKA reporTS
the pivotal connection as a ‘limitation,’ instead of determining
whether the structure of the orthman device was equivalent . . .
to the overall structure corresponding to the function recited in
element 4.”14 We therefore reversed the judgment of the district
court and remanded the cause for further proceedings consistent
with our opinion. We overruled the estate’s motion for rehearing
and issued our mandate.
3. proceediNgs oN remANd
(a) Motion for Summary Judgment
After our mandate was entered on the record of the district
court, the estate filed another motion for summary judgment
“on the issue of Non-infringement and/or damages,” asserting
that on the basis of the pleadings, evidence, and admissions in
the record and the district court’s Markman order, there was no
genuine issue of material fact “as to any issue of Infringement”
and that the estate was entitled to judgment as a matter of law.
At a hearing on the motion, the estate reoffered and the court
received certain evidence which was included in the New Tek I
record, including the depositions of richard L. Wood and William
orthman, prosecution history records for the ’080 patent and
patent No. 4,640,365 (the ’365 patent), and certain drawings
pertaining to the patents. Counsel for the estate argued that the
court should determine as a matter of law that the patent on the
orthman device could not have infringed upon the ’080 patent
because of certain limitations upon the doctrine of equivalents,
including the all-elements rule, prosecution history estoppel,
and the related disclosure dedication rule. In response, New Tek
argued that the grounds advanced for the motion conflicted with
our opinion in New Tek I and consisted of an attempt to reassert
arguments unsuccessfully advanced in that case.
After the hearing, the district court on its own motion requested
“affidavits regarding prosecution history estoppel limited to the
patent prosecution record.” The court conducted another hearing
at which it received the affidavits of James L. Young, a patent
attorney appearing as an expert for the estate, and Wood, a pat-
ent attorney who served as an expert for New Tek.
14 Id. at 284, 702 N.W.2d at 354.

(b) order Sustaining Motion for Summary Judgment
The district court subsequently entered an order granting the
estate’s motion for summary judgment. It first determined that
it was not precluded from doing so by our opinion in New Tek I.
It reasoned this court had concluded that the evidentiary record
failed to establish a prima facie case of noninfringement under
the doctrine of equivalents, but had not addressed the issues of
law raised by the motion for summary judgment filed following
remand; namely, whether the all-elements rule or prosecution
history estoppel precluded an infringement analysis under the
doctrine of equivalents. The district court determined as a mat-
ter of law that New Tek could not have prevailed on a patent
infringement claim for two reasons. First, because under the
all-elements rule, its theory “would vitiate the claim language in
New Tek’s ’080 patent” and, second, because prosecution his-
tory estoppel barred New Tek’s attempt to recapture a purported
equivalent that was disclaimed during the prosecution of its
underlying ’365 patent.
New Tek perfected a timely appeal from this order.
II. ASSIgNMeNTS oF error
New Tek assigns, consolidated and restated, that the trial
court erred in (1) ignoring the law of the case established by
New Tek I; (2) misapplying the all-elements rule; (3) misap-
plying prosecution history estoppel; (4) misapplying 35 U.S.C.
§ 112, ¶ 6 (2000), by not considering the full range of equiva-
lents to which New Tek was statutorily entitled; and (5) denying
New Tek a jury trial on contested issues of fact.
III. STANDArD oF reVIeW
[1,2] Summary judgment is proper when the pleadings and
evidence admitted at the hearing disclose no genuine issue as
to any material fact or as to the ultimate inferences that may be
drawn from those facts and that the moving party is entitled to
judgment as a matter of law.15 In reviewing a summary judg-
ment, an appellate court views the evidence in a light most
15 Nebraska Coalition for Ed. Equity v. Heineman, 273 Neb. 531, 731 N.W.2d
164 (2007).
NeW TeK MFg. v. BeeHNer 	959
Cite as 275 Neb. 951

960 	275 NeBrASKA reporTS
favorable to the party against whom the judgment is granted and
gives such party the benefit of all reasonable inferences deduc-
ible from the evidence.16
[3] When reviewing questions of law, an appellate court has
an obligation to resolve the questions independently of the con-
clusions reached by the trial court.17
IV. ANALYSIS
1. subJecT mATTer J urisdicTioN
After this court’s decision in New Tek I and the submission
of briefs in the present appeal, the U.S. Court of Appeals for
the Federal Circuit decided two cases that addressed the issue
of whether federal jurisdiction exists under 28 U.S.C. § 1338(a)
with respect to legal malpractice actions presenting issues of
patent law.18 In light of those cases, we ordered supplemental
briefing from the parties to address whether Nebraska state
courts have jurisdiction over the subject matter of this action. We
reiterate our determination in New Tek I, that this professional
malpractice case arises entirely under state law, and conclude
that we do have subject matter jurisdiction over the claim.
2. docTriNe of equivAleNTs ANd iTs limiTATioNs
A device may infringe on a patent either literally or under the
doctrine of equivalents.19 New Tek contends that had its patent
not lapsed, the orthman device would have infringed under the
doctrine of equivalents. Under this judicially created doctrine,
“a product or process that does not literally infringe upon the
express terms of a patent claim may nonetheless be found to
infringe if there is ‘equivalence’ between the elements of the
accused product or process and the claimed elements of the
16 Alston v. Hormel Foods Corp., 273 Neb. 422, 730 N.W.2d 376 (2007).
17 Coffey v. County of Otoe, 274 Neb. 796, 743 N.W.2d 632 (2008); Heinze v.
Heinze, 274 Neb. 595, 742 N.W.2d 465 (2007).
18 Air Measurement Tech. v. Akin Gump Strauss Hauer, 504 F.3d 1262 (Fed.
Cir. 2007); Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281
(Fed. Cir. 2007).
19 See, Chiuminatta Concrete Concepts v. Cardinal Industries, 145 F.3d 1303
(Fed. Cir. 1998); Valmont Industries, Inc. v. Reinke Mfg. Co., Inc., supra
note 8.

patented invention.”20 As we noted in New Tek I, the doctrine of
equivalents prevents a copyist from making “unimportant and
insubstantial changes and substitutions in a patent which, though
adding nothing, would be enough to take the copied matter out-
side the claim.”21
In reaffirming the modern viability of the doctrine of equiva-
lents as a means of establishing patent infringement, the U.S.
Supreme 	Court, 	in 	Warner-Jenkinson 	Co. 	v. 	Hilton 	Davis
Chemical Co.,22 recognized the danger that broad application
of the doctrine would “conflict . . . with the definitional and
public-notice functions of the statutory claiming requirement”
under federal patent law. The Court stated that “[i]t is important
to ensure that the application of the doctrine, even as to an indi-
vidual element, is not allowed such broad play as to effectively
eliminate that element in its entirety.”23
The determination of infringement under the doctrine of
equivalents is limited by two primary legal doctrines: (1)
prosecution history estoppel and (2) the all-elements rule.24
prosecution history “constitutes a public record of the patentee’s
representations concerning the scope and meaning of the claims,
and competitors are entitled to rely on those representations
when ascertaining the degree of lawful conduct, such as design-
ing around the claimed invention.”25 prosecution history estop-
pel, also known as “‘file wrapper estoppel,’” is a defense to
infringement under which a patent holder who amends a patent
20 Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21, 117
S. Ct. 1040, 137 L. ed. 2d 146 (1997), citing Graver Mfg. Co. v. Linde Co.,
339 U.S. 605, 70 S. Ct. 854, 94 L. ed. 1097 (1950).
21 New Tek I, supra note 1, 270 Neb. at 280, 702 N.W.2d at 351, citing Valmont
Industries, Inc. v. Reinke Mfg. Co., Inc., supra note 8.
22 Warner-Jenkinson Co. v. Hilton Davis Chemical Co., supra note 20, 520
U.S. at 29.
23 Id.
24 Seachange Intern., Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005);
Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308 (Fed.
Cir. 2003).
25 Hockerson-Halberstadt v. Avia Group Intern., 222 F.3d 951, 957 (Fed. Cir.
2000).
NeW TeK MFg. v. BeeHNer 	961
Cite as 275 Neb. 951

962 	275 NeBrASKA reporTS
application has no claim of infringement on patent claims not
made in the final patent.26 The all-elements rule prevents appli-
cation of the doctrine of equivalents if applying the doctrine
would vitiate an entire claim limitation.27 According to this rule,
an accused product does not infringe “unless it contains each
limitation of the claim, either literally or by an equivalent.”28
Determination of both literal infringement and infringement
under the doctrine of equivalents is a question of fact.29 But
the application of the legal limitations imposed by prosecution
history estoppel and the all-elements rule is a question of law
which an appellate court reviews de novo.30
3. prosecuTioN hisTory esToppel
(a) Law-of-the-Case Doctrine Inapplicable
[4-6] New Tek argues that by entering summary judgment
in favor of the estate following remand, the district court vio-
lated the law-of-the-case doctrine by ignoring our holding in
New Tek I that there were genuine issues of material fact which
precluded summary judgment on the record as it was then pre-
sented. Under the law-of-the-case doctrine, an appellate court’s
holdings on questions presented to it in reviewing the trial
court’s proceedings become the law of the case; those holdings
conclusively settle, for the purposes of that litigation, all matters
ruled upon, either expressly or by necessary implication.31 The
doctrine reflects the principle that “‘“[a]n issue which has been
26 Warner-Jenkinson Co. v. Hilton Davis Chemical Co., supra note 20, 520
U.S. at 30.
27 Seachange Intern., Inc. v. C-COR, Inc., supra note 24; Asyst Technologies,
Inc. v. Emtrak, Inc., 402 F.3d 1188 (Fed. Cir. 2005).
28 Freedman Seating Co. v. American Seating Co., 420 F.3d 1350, 1358 (Fed.
Cir. 2005).
29 Lockheed Martin Corp. v. Space Systems/Loral, Inc., supra note 24;
Insituform Technologies v. Cat Contracting, 161 F.3d 688 (Fed. Cir. 1998).
30 Seachange Intern., Inc. v. C-COR, Inc., supra note 24; Lockheed Martin
Corp. v. Space Systems/Loral, Inc., supra note 24; Bell Atlantic Network
Serv v. Covad Communications, 262 F.3d 1258 (Fed. Cir. 2001).
31 See, Money v. Tyrrell Flowers, ante p. 602, 748 N.W.2d 49 (2008); Thomas
v. State, 268 Neb. 594, 685 N.W.2d 66 (2004).

litigated and decided in one stage of a case should not be reliti-
gated in a later stage.”’”32 When an appellate court remands a
case to an inferior tribunal, the law-of-the-case doctrine prevents
that court from taking action inconsistent with the judgment of
the appellate court.33
our opinion in New Tek I addressed the merits of the infringe-
ment claim under the doctrine of equivalents. We did not discuss
or decide the legal issue of prosecution history estoppel, which
was raised for the first time following our remand in New Tek I.
Accordingly, the law-of-the-case doctrine did not preclude the
district court from addressing this issue.
(b) Additional Facts
Certain additional facts reflected by the prosecution history
files for the ’365 patent and the ’080 patent are pertinent to our
de novo review of this issue.
Federal patent law requires an applicant to “particularly
[point] out and distinctly [claim] the subject matter which the
applicant regards as his invention.”34 eugene Schmidt’s initial
application for what became the ’365 patent listed 22 separate
claims for the “row following guidance device” for a tractor-
drawn row crop implement. Two of these claims described
“lever-pivoting means” utilized in the guidance device. Claim
3 described a lever-pivoting means which utilized a single
two-way hydraulic cylinder. Claim 4 described a lever-pivoting
means which consisted of two hydraulic cylinders.
Federal patent law, at 35 U.S.C. § 102(e) (1994), as then
in effect, provided that a person shall be entitled to a pat-
ent unless
the invention was described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent, or
on an international application by another who has fulfilled
32 Money v. Tyrrell Flowers, supra note 31, ante at 613, 748 N.W.2d at 60,
quoting In re Application of City of Lincoln, 243 Neb. 458, 500 N.W.2d 183
(1993).
33 See, id.; State v. White, 257 Neb. 943, 601 N.W.2d 731 (1999).
34 35 U.S.C. § 112.
NeW TeK MFg. v. BeeHNer 	963
Cite as 275 Neb. 951

964 	275 NeBrASKA reporTS
the requirements of [federal patent law] before the inven-
tion thereof by the applicant for patent[.]
The patent examiner rejected Schmidt’s claim 3 under this provi-
sion “as being anticipated by” an existing patent. The examiner
stated that claim 4 would be allowable if rewritten to overcome
certain objections not based on prior art. Finally, the examiner
objected to the drawings included in the application, stating in
part that “[t]he drawings must show every feature of the inven-
tion specified in the claims. Therefore, the two-way hydraulic
cylinder of claim 3 must be shown or the feature should be can-
celled from the claim. No new matter should be entered.”
In response, Schmidt requested cancellation of claim 3 of
the original application. original claim 4, describing the two-
cylinder lever-pivoting means, was incorporated into Schmidt’s
amended patent application as claim 1.
The two-hydraulic-cylinder limitation in the ’365 patent was
carried forward into claim 22 of the ’080 patent. This reissue
patent is the basis of New Tek’s hypothetical infringement claim.
In its Markman order, which we discussed but did not disturb in
New Tek I, the district court construed claim 22, element 4, of
the ’080 patent as written in a means-plus function format with
corresponding structures consisting of
a first and second hydraulic cylinder, one at each end of
the elongated member, and a tie rod. element 4 also claims
that the first hydraulic cylinder must be pivotally connected
at one end to the free end of the first articulated member’s
lever and pivotally connected at the other end to said elon-
gated member at a point spaced away from the pivotal con-
nection of the respective lever and elongated member. The
second hydraulic cylinder must be pivotally connected at
one end to said elongated member and pivotally connected
at the other end to the second articulated member’s lever
at a point spaced away from the pivotal connection of the
lever and elongated member.
(emphasis supplied.)
The orthman device, which New Tek alleges would have
infringed on its patent but for Beehner’s negligence in allow-
ing it to lapse, claimed a “hydraulic means” consisting of “one
double rod hydraulic cylinder.”

(c) resolution
prosecution history estoppel ensures that claims are inter-
preted by reference to those that were canceled or rejected
during the application process.35 Although the doctrine of equiv-
alents protects the patent holder against “insubstantial altera-
tions” in the patent claim, “[w]hen . . . the patentee originally
claimed the subject matter alleged to infringe but then narrowed
the claim in response to a rejection, he may not argue that the
surrendered territory comprised unforeseen subject matter that
should be deemed equivalent to the literal claims of the issued
patent.”36 Thus,
[p]rosecution history estoppel ensures that the doctrine
of equivalents remains tied to its underlying purpose.
Where the original application once embraced the pur-
ported equivalent but the patentee narrowed his claims to
obtain the patent or to protect its validity, the patentee can-
not assert that he lacked the words to describe the subject
matter in question. The doctrine of equivalents is premised
on language’s inability to capture the essence of innova-
tion, but a prior application describing the precise element
at issue undercuts that premise. In that instance the pros-
ecution history has established that the inventor turned his
attention to the subject matter in question, knew the words
for both the broader and narrower claim, and affirmatively
chose the latter.37
put succinctly, “[p]rosecution history estoppel serves to limit the
doctrine of equivalents by denying equivalents to a claim limita-
tion whose scope was narrowed during prosecution for reasons
related to patentability.”38
In this case, we focus on Schmidt’s amended application for
patent ’365, which canceled his original claim 3 in response to
the patent examiner’s rejection of the original application for the
35 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 122
S. Ct. 1831, 152 L. ed. 2d 944 (2002).
36 Id., 535 U.S. at 733-34.
37 Id., 535 U.S. at 734-35.
38 Pioneer Magnetics, Inc. v. Micro Linear Corp., 330 F.3d 1352, 1356 (Fed.
Cir. 2003).
NeW TeK MFg. v. BeeHNer 	965
Cite as 275 Neb. 951

966 	275 NeBrASKA reporTS
’365 patent based in part upon prior art. The first question in a
prosecution history estoppel inquiry is whether the literal scope
of the claim has been narrowed by amendment.39
The district court found that Schmidt’s cancellation of his
original claim 3 was a narrowing amendment. New Tek argues
this was an error because the amended application included
a new claim specifying “a hydraulic cylinder means” and a
dependent claim specifying a second hydraulic cylinder means.
However, as the district court correctly noted, even if the patent
were so construed, it would still not include a claim for the sin-
gle two-way hydraulic cylinder described in claim 3 of the origi-
nal application. We view the amendments in this case as similar
to those considered in J & M Corp. v. Harley-Davidson, Inc.,40
a case involving a patent for a device used to mount accessories
to a motorcycle helmet. The patentee originally argued that its
claim was broad enough to include a mounting device using
either one or two clamps, but in response to an examiner’s
objection, it canceled the single clamp claims and substituted a
claim for “‘gripping means’” drafted in a means-plus-function
format.41 The device alleged to have infringed upon the patent
utilized a single clamp. The court concluded that the amendment
of the claims prior to the issuance of the patent narrowed the
claim to dual clamp accessories and estopped the patentee from
asserting infringement by the accused single clamp accessories
under the doctrine of equivalents.
In this case, the single two-way hydraulic cylinder claim
originally asserted as claim 3 was canceled, but the two-cylinder
lever-pivoting means originally asserted as claim 4 was retained
in the amended application. The drawings incorporated in the
’365 patent and the ’080 patent reflect only the two-cylinder
means. element 4, claim 22, of the ’080 patent, as construed by
the district court in its Markman order, describes only a device
utilizing two hydraulic cylinders as lever-pivoting means. We
conclude that the rejected claim 3 of the original application
39 Festo v. Shoketsu Kinzoku Kogyo Kabushiki, 344 F.3d 1359 (Fed. Cir. 2003),
citing Pioneer Magnetics, Inc. v. Micro Linear Corp., supra note 38.
40 J & M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360 (Fed. Cir. 2001).
41 Id. at 1364.

was replaced by a narrowing claim which may trigger pros-
ecution history estoppel as a legal limitation on the doctrine
of equivalents.
The occurrence of a narrowing amendment triggers a second
inquiry as to “whether the reason for that amendment was a
substantial one relating to patentability.”42 only the patent’s
prosecution history can be a basis for such reason.43 The record
in this case clearly discloses the reason for the amendment. The
examiner rejected claim 3, pursuant to 35 U.S.C. § 102(e), as
being anticipated by an existing patent. In his response, Schmidt
requested the cancellation of claim 3. Such a narrowing amend-
ment made to distinguish claims from those disclosed in prior
art forms the “classic basis for the application of prosecution
history estoppel.”44 patentees are “not free to . . . renege on a
deal struck with the [patent Trademark office] during patent
prosecution. . . . When an applicant distinguishes prior art by
surrendering some previously-claimed subject matter, the paten-
tee may not later seek to recover that surrendered subject matter
by the doctrine of equivalents.”45
The final inquiry is to determine the scope of the estoppel
resulting from the cancellation of claim 3 describing a lever-
pivoting means employing a single hydraulic cylinder. The law
applicable to this determination has developed over the past 25
years. In Hughes Aircraft Co. v. United States,46 the Court of
Appeals for the Federal Circuit held that prosecution history
estoppel applied as a flexible bar, such that depending on the
42 Festo v. Shoketsu Kinzoku Kogyo Kabushiki, supra note 39, 344 F.3d at
1366.
43 Pioneer Magnetics, Inc. v. Micro Linear Corp., supra note 38.
44 Id. at 1357. See, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
supra note 35; Warner-Jenkinson Co. v. Hilton Davis Chemical Co., supra
note 20 (cases cited therein); Exhibit Supply Co. v. Ace Corp., 315 U.S. 126,
62 S. Ct. 513, 86 L. ed. 736 (1942); Keystone Co. v. Northwest Eng. Co.,
294 U.S. 42, 55 S. Ct. 262, 79 L. ed. 747 (1935).
45 Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 1432-33 (Fed.
Cir. 1997) (citations omitted).
46 Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1363 (Fed. Cir.
1983).
NeW TeK MFg. v. BeeHNer 	967
Cite as 275 Neb. 951

968 	275 NeBrASKA reporTS
nature and purpose of an amendment, “it may have a limiting
effect within a spectrum ranging from great to small to zero.”
The same court revisited this issue in Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki (Festo I).47 Concluding that the flexible
bar principle announced in Hughes Aircraft Co. was “‘unwork-
able’” and seemingly inconsistent with another line of its cases,
the court rejected the principle and held that “prosecution his-
tory estoppel acts as a complete bar to the application of the
doctrine of equivalents when an amendment has narrowed the
scope of a claim for a reason related to patentability.”48
The U.S. Supreme Court granted certiori and rejected the
complete bar approach in Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co. (Festo II).49 Noting its prior holdings that a
patentee’s decision to narrow claims through amendment may be
presumed to be a general disclaimer of the territory between the
original claim and the amended claim, the Court concluded that
a patentee could nevertheless rebut this presumption by showing
that a particular equivalent was “unforeseeable at the time of the
application,” that “the rationale underlying the amendment may
bear no more than a tangential relation to the equivalent in ques-
tion,” or that “there may be some other reason suggesting that
the patentee could not reasonably be expected to have described
the insubstantial substitute in question.”50
on remand from the U.S. Supreme Court, in Festo v. Shoketsu
Kinzoku Kogyo Kabushiki (Festo III),51 the Federal Circuit pro-
vided “general guidance” with regard to the three “rebuttal
criteria” specified in Festo II. It held that the foreseeability of
the first rebuttal criterion should be determined by an objective
standard and noted that “if the alleged equivalent were known
in the prior art in the field of the invention, it certainly should
47 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki, 234 F.3d 558 (Fed. Cir.
2000).
48 Id. at 574, 575.
49 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., supra note 35.
50 Id., 535 U.S. at 740-41.
51 Festo v. Shoketsu Kinzoku Kogyo Kabushiki, supra note 39, 344 F.3d at
1368-69.

have been foreseeable at the time of the amendment.”52 Noting
that it could not anticipate all instances in which a narrowing
amendment could be merely “tangential” to the equivalent in
question, under the second rebuttal criterion, the court stated
with certainty that “an amendment made to avoid prior art that
contains the equivalent in question is not tangential; it is cen-
tral to allowance of the claim.”53 The court held that the third
criterion “may be satisfied when there was some reason, such
as the shortcomings of language, why the patentee was pre-
vented from describing the alleged equivalent when it narrowed
the claim.”54
New Tek contends that the district court erred in applying
the analytical approach announced in Festo II and refined in
Festo III in reaching its conclusion that prosecution history
estoppel barred any claim that the orthman device infringed
upon its patent under the doctrine of equivalents. It argues that
this amounted to an impermissible retroactive application of
decisional law because this suit was filed before those deci-
sions. We are not persuaded by this argument. It is impossible
to know precisely when any actual infringement action by New
Tek would have been tried if the patent had not lapsed, and thus
impossible to know what law would have been applied in such
an action. Moreover, the Federal Circuit specifically recognized
in Festo I that its “flexible bar” approach had been unwork-
able and inconsistent with another line of cases from the same
court.55 The opinions in Festo II and Festo III provided clarity
in this unsettled area of the law, and we therefore apply those
principles in our de novo review.
We conclude as a matter of law that none of the rebuttal cri-
teria identified in Festo II and explained further in Festo III are
met in this case. The first criterion is not met because it cannot
be said that the claimed equivalent was unforeseeable at the time
of the narrowing amendment. The claimed means consisting of
52 Id. at 1369.
53 Id.
54 Id.
55 Festo I, supra note 47, 234 F.3d at 574.
NeW TeK MFg. v. BeeHNer 	969
Cite as 275 Neb. 951

970 	275 NeBrASKA reporTS
a single two-way hydraulic cylinder was canceled in response to
a prior art objection. As we noted in New Tek I, there is no evi-
dence that the alleged equivalent is “after-arising technology.”56
The second criterion is not met because the amendment to claim
3 was made to avoid prior art that contained the equivalent in
question, and thus it is not tangential, but is central to the allow-
ance of the claim.57 The third criterion is not met because the
claim for the single two-way hydraulic cylinder was rejected on
the basis of prior art; there can be no other reason that Schmidt
could not have described the accused equivalent.58
For these reasons, we conclude that prosecution history estop-
pel would have barred any patent infringement claim by New
Tek against orthman Manufacturing if the patents had remained
in effect at all relevant times. Because the hypothetical infringe-
ment claim lacked merit, there is no genuine issue of material
fact regarding the injury and damages allegedly sustained by
New Tek as a result of Beehner’s negligence, and the estate is
entitled to judgment as a matter of law.
V. CoNCLUSIoN
We conclude that the district court did not err in determin-
ing as a matter of law that prosecution history estoppel would
have barred New Tek’s hypothetical patent infringement claim
which is the basis for its alleged injury and damages in this
professional negligence action. Because this issue is disposi-
tive, we need not address New Tek’s argument that the district
court erred in concluding that the claim would also have been
barred by the all-elements rule. We affirm the judgment of the
district court.
A ffirmed .
56 New Tek I, supra note 1, 270 Neb. at 281, 702 N.W.2d at 352.
57 See Festo III, supra note 39. See, also, Pioneer Magnetics, Inc. v. Micro
Linear Corp., supra note 38.
58 See Pioneer Magnetics, Inc. v. Micro Linear Corp., supra note 38.