KASHIWA, Circuit Judge.
This is an appeal from a judgment of the United States District Court for the District of Columbia (No. 80-3123), entered September 30, 1983. 221 USPQ 1056. The district court, after ruling in favor of appellee, Bayer Aktiengesellschaft ("Bayer"), awarded attorney fees to Bayer pursuant to 35 U.S.C. § 285. We vacate and remand.
In the district court, Bayer filed a declaratory judgment suit, seeking a declaration that its compound, SIR-8514, does not infringe the claims of appellant's, Duphar International Research B.V. ("Duphar"), patents. Duphar in turn filed a counterclaim that asserted infringement of five of its United States patents.
The parties consented to a trial before a United States magistrate pursuant to 28 U.S.C. § 636(c) (1982).
The '842 patent relates to certain substituted benzoyl ureas, and insecticidal preparations containing them. Original claim 1 reads:
1. Compounds of the formula
The specification of the '842 patent, as well as the specification of the original application, includes the following disclosure:
During prosecution of the application that matured into the '842 patent, as well as its parent and grandparent applications, original claim 1 and other generic claims were repeatedly rejected under 35 U.S.C. § 121.
The Allegedly Infringing Compound
Bayer's compound, SIR-8514, (N-(2-chlorobenzoyl)-N'-(4-trifluoromethoxyphenyl)) urea, has the following formula:
It differs from the compounds disclosed in the '842 patent and those disclosed in the prior art in that its phenyl group is substituted with a -OCF
District Court Proceeding
At trial, Duphar asserted that Bayer's SIR-8514 compound infringed the claims of the '842 patent. Although it admitted that there was no literal infringement of any of the claims of its '842 patent in view of the fact that SIR-8514 is a 2-mono-substituted benzoyl urea and not a 2,6-di-substituted benzoyl urea, as claimed, Duphar nonetheless asserted infringement under the doctrine of equivalents. In countering Duphar's contentions, Bayer asserted that Duphar had narrowed its '842 claims during prosecution to include only 2,6-di-substituted benzoyl ureas and thus, the doctrine of file history estoppel would preclude the application of the doctrine of equivalents.
To resolve this case, the parties agreed to a determination of a single issue: the scope of original claim 1. The parties agreed that if original claim 1 literally encompassed Bayer's SIR-8514 compound, then the doctrine of file history estoppel would apply. In a colloquy between the magistrate and Duphar's trial counsel, the trial counsel admitted that the issue was the scope of its original claim 1. The colloquy, in pertinent part, is as follows:
At another instance during the trial, Duphar's Trial Counsel conceded that if Bayer's compound were encompassed by original claim 1, then file history estoppel would apply. He stated:
Duphar, at trial, argued that the substituted phenyl group in original claim 1 can only be substituted with three substituents — halogen, nitrocyano, and halogenated alkyl. If this interpretation were correct, then Bayer's compound with a -OCF
Bayer, on the other hand, interpreted the phrase to mean that the three enumerated substituents referred only to the possible substituents for the pyridyl group. It contended that the substituted phenyl group had no limitations as to substituents.
The magistrate, after hearing arguments and expert testimony, found for Bayer. He found that R
In his Conclusions of Law, the magistrate recited the doctrine of file history estoppel. He stated in pertinent part:
Accordingly, judgment was entered in favor of Bayer, declaring that its SIR-8514 compound did not infringe the claims of Duphar's '842 patent.
In addition, the magistrate found that this case was an exceptional case based on the facts set forth in his factfindings. As such, he ruled that Bayer was entitled to an award of reasonable attorney fees pursuant to 35 U.S.C. § 285. The magistrate concluded that:
35 U.S.C. § 285
In the instant appeal, Duphar is seeking to reverse only the award of attorney fees. It argues that the magistrate misapprehended the doctrine of file history estoppel, as evidenced by his statement "What was surrendered, rather than the reason for the surrender, is the controlling consideration." It appears that the magistrate believed that if claims were once narrowed for whatever reason, then the doctrine of equivalents cannot be invoked under any circumstances. The attorney fees award is, therefore, based on an erroneous conception of the law.
We agree with Duphar that the magistrate misstated the doctrine of file history estoppel. As stated by this court in Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1362, 219 USPQ 473, 481 (1983):
Thus, whenever the doctrine of file history estoppel is invoked, a close examination must be made as to, not only what was surrendered, but also the reason for such a surrender. The fact that claims were narrowed does not always mean that the doctrine of file history estoppel completely prohibits a patentee from recapturing some of what was originally claimed. Accordingly, limiting the claims because of a restriction requirement, as occurred here, would not necessarily invoke file history estoppel.
If the magistrate's decision in the instant case were based solely on an erroneous conception of law, the doctrine of file history estoppel, then it would have been reversible error. See Mayview, supra; Stickle, supra. The reason that we can only partially agree with Duphar is the fact that the doctrine of file history estoppel was not the issue posed at trial.
The issue posed at trial, instead, was whether or not Duphar's original claim 1 literally encompassed Bayer's SIR-8514 compound. And, the argument or theory advanced by Duphar at trial was that the substituted phenyl group in its original claim 1 had only three substituents. After hearing the arguments and testimony by experts, the magistrate found that Duphar's interpretation of its original claim 1, based on the argument or theory advanced by Duphar, was frivolous. Such frivolity, the magistrate held, justified an award of attorney fees for Bayer. If we were to ignore the magistrate's misstatement regarding file history estoppel, we would probably agree with the magistrate that the argument or theory advanced by Duphar at trial was frivolous.
Thus, although we agree with Duphar that the magistrate misstated the doctrine of file history estoppel, we cannot agree with it that the magistrate's finding of frivolity is totally incorrect.
To buttress its argument that the magistrate's finding of frivolity is incorrect, Duphar also contends that it had advanced a second theory at trial. This second theory, in essence, is that Bayer's SIR-8514 compound could not be encompassed within original claim 1 since the -OCF
Duphar interprets the phrase in the specification "If R
We, however, find this contention to be meritless. The record does not support Duphar's contention that it presented this theory at trial. The only reference to this theory is in its Proposed Findings of Fact.
We recognize that, in general, an appellate court will only review a lower court's decision in light of the grounds and theories advanced below. In Virtue v. Creamery Package Manufacturing Co., 227 U.S. 8, 33 S.Ct. 202, 57 L.Ed. 393 (1913), the Supreme Court refused to consider an appellant's theory which was presented for the first time on appeal. Whereas that appellant's theory at trial was that the appellees conspired or combined in violation of the Sherman Act, its theory on appeal was that one of the appellees was also liable because it was large enough to be a combination all by itself. The issue in Roura v. Government of the Philippine Islands, 218 U.S. 386, 31 S.Ct. 73, 54 L.Ed.
Thus, under normal circumstances, we would have ignored Duphar's new argument regarding the misstatement of file history estoppel because that theory was not presented below. Since the issue actually tried below was the scope of original claim 1 and Duphar presented a frivolous theory in support of its position, we would have affirmed the magistrate's finding as to frivolousness. We, however, refuse to take this route since we cannot ignore the fact that the magistrate did misstate the doctrine of file history estoppel and his misimpression of that doctrine may have affected his decision. Dewey v. Des Moines, 173 U.S. 193, 19 S.Ct. 379, 43 L.Ed. 665 (1899).
Simply reversing the magistrate's decision, premised on the fact that he had misstated the law, is also inappropriate in this case. First, the doctrine of file history estoppel was not the issue at trial. No one, at trial, presented the full dimension of this doctrine. For instance, the applicability or inapplicability of the doctrine in relation to certain types of rejections and amendments, e.g., amendments in response to section 112 objections, was not discussed. Since a trial judge or a magistrate does not decide a case in vacuo, he cannot be faulted regarding a point of law when he was not informed about it at trial. In addition, the magistrate's opinion regarding attorney fees appears to be premised on other grounds. For instance, he found that this case was an "exceptional case based on the facts set forth above * * *," and that "facts here clearly justify an award of attorney's fees * * *." Although he misstated the law in relation to file history estoppel, his decision regarding frivolity may be supported by other unspecified, nonerroneous reasons.
Thus, in light of the unique facts and circumstances of this case, we vacate the magistrate's decision and remand the case to him for his further consideration and elaboration of the award of attorney fees.
VACATED and REMANDED.