238 F.3d 1376 (Fed. Cir. 2000)
LITTON SYSTEMS, INC., Plaintiff-Appellant,v.HONEYWELL INC., Defendant-Appellee.
00-1241
United States Court of Appeals for the Federal  Circuit
DECIDED: February 5, 2001

Appealed from: U.S. District Court for the Central District of California
Senior Judge Mariana R. Pfaelzer [Copyrighted Material Omitted]
John G. Roberts, Jr., Hogan & Hartson L.L.P., of Washington, DC, argued for plaintiff-appellant. With him on the brief was Catherine E. Stetson. Of counsel on the brief were Frederick A. Lorig, and Sidford L. Brown, Bright & Lorig of Los Angeles, California; Rory J. Radding, Pennie & Edmonds L.L.P., of New York, New York; and Stanton T. Lawrence, III, and Carl P. Bretscher, Pennie & Edmonds L.L.P., of Washington, DC.
Richard G. Taranto, Farr & Taranto, of Washington, DC, argued for defendant-appellee. Of counsel on the brief were Gregory A. Long and Kent R. Raygor, Sheppard Mullin Richter & Hampton, of Los Angeles, California; and John Donofrio, Honeywell International, Inc., of Morristown, New Jersey. Of counsel on the brief was George E. Quillin, Foley & Lardner, of Washington, DC
Before MAYER, Chief Judge, RADER and BRYSON, Circuit Judges.
Opinion for the court filed by Chief Judge MAYER. Circuit Judge BRYSON concurs in part and dissents in part.
MAYER, Chief Judge.


1
Litton Systems, Inc. (Litton) appeals the judgment of the United States  District Court for the Central District of California granting summary  judgment and judgment as a matter of law (JMOL) that Honeywell, Inc.  (Honeywell) did not infringe Litton's United States Reissue Patent No.  32,849 ('849 reissue) directed to a "method for fabricating multi-layer  optical films," and JMOL for Honeywell on Litton's state law tort claims of  intentional interference with contractual relations and intentional  interference with prospective economic advantage. See Litton Sys., Inc. v.  Honeywell, Inc., No. CV 90-0093 MRP (C.D. Cal. Jan. 31, 2000). Because, in  light of our recent decision in Festo Corp. v. Shoketsu Kinzoku Kogyo  Kabushiki Co., Ltd., 234 F.3d 558, 56 USPQ2d 1865 (Fed. Cir. 2000), there  was no infringement under the doctrine of equivalents as a matter of law,  and because the district court improperly resolved genuine issues of  material fact that should have been determined by a jury regarding the  state law claims, we affirm-in-part, reverse-in-part, vacate-in-part, and  remand.

Background

2
The factual background to this case is fully set out in Litton Sys., Inc.  v. Honeywell, Inc., 87 F.3d 1559, 39 USPQ2d 1321 (Fed. Cir. 1996) (Litton  I), and will be discussed here only to the extent necessary to the current  appeal. In 1979, Litton obtained United States Patent No. 4,142,958 ('958  patent) claiming a sputtering process for making multiple layer optical  films using an ion beam, without limitation to a particular ion beam  source. It sought reissue in 1985 because the '958 patent was invalid for  obviousness, and proposed an amendment requiring that the multiple layers  have different indices of refraction. The examiner twice rejected this  amendment as obvious over the prior art, including that disclosed in the  '958 patent. Litton argued specifically that (1) it used a Kaufman-type ion  beam source, (2) it obtained an unexpected result from the use of the  Kaufman-type source to produce the required ion beam, and (3) its claims  were limited "only to the Kaufman-type ion beam guns" not "to any other ion  beam gun but the Kaufman gun." The examiner conditioned allowance on  Litton's amendment of its claims to limit them to Kaufman-type ion beam  sources, and the '849 reissue was issued following the required amendment.


3
In 1981, before the events just described, Anthony Louderback, one of the  co-inventors of the '958 patent, left his employment at Litton to form his  own optical coating company, Ojai Research, Inc. (Ojai). Louderback  continued to work with Litton under an exclusive consulting agreement that  gave Litton ownership of any inventions, developments, or discoveries he  made based on the licensed process and forbade him from disclosing the  patented technology. He also entered a licensing agreement with Litton that  permitted him to practice the '958 patent but forbade him from using the  patented technology to produce mirrors for anyone other than Litton. After  the consulting contract expired in 1983, from 1984 to 1990 Louderback  provided Honeywell, one of Litton's competitors, with mirrors made using  the patented method.


4
In 1990, Litton sued Honeywell, Louderback, and Ojai for infringement of  the '849 reissue. Litton asserted that Louderback had infringed the '849  reissue and breached their licensing and consulting agreements. Litton  later amended the complaint to sue Honeywell for intentional interference  with contractual relations and intentional interference with prospective  economic advantage. Ultimately, Honeywell and Litton went to trial. In the  special verdict form, the jury reported that (1) Honeywell did not prove  any of the asserted claims invalid, (2) Litton had proved the asserted  claims infringed, and (3) Litton had met its burden on the state law  claims.


5
This case now returns to us for the third time. Our first judgment, Litton  I, was vacated and remanded by the Supreme Court of the United States for  reconsideration in light of Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,  520 U.S. 17, 41 USPQ2d 1865 (1997). Honeywell, Inc. v. Litton Sys., Inc.,  520 U.S. 1111 (1997) (GVR order). Next, in Litton II, we construed  "Kaufman-type ion beam source" to encompass any ion beam gun with the  stated components: a hot-wire cathode, an anode, grids, and magnets. Litton  Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449, 1455, 46 USPQ2d 1321, 1324  (Fed. Cir. 1998). Based on this construction, we affirmed that Honeywell's  hollow cathode and radio frequency (RF) ion beam processes do not literally  infringe the '849 reissue. We vacated and remanded for consideration of  infringement under the doctrine of equivalents pursuant to the proper claim  construction. Id. Because the jury may have relied on patent infringement  as the wrongful means supporting the state law torts, we reversed JMOL,  vacated the jury verdict, and remanded for further proceedings in  accordance with state law. Id. at 1465, 46 USPQ2d at 1333.


6
On remand from Litton II, the district court granted summary judgment and  JMOL of non-infringement of the '849 reissue. It held that the prosecution  history precludes infringement under the doctrine of equivalents for  Honeywell's hollow cathode ion beam source and the all-elements rule  precludes infringement under the doctrine of equivalents for either the  Honeywell hollow cathode or RF ion beam sources. The court also granted  JMOL for Honeywell on the state law claims because Litton failed to  establish the requisite elements. Litton appeals.

Discussion

7
"We review a district court's grant of summary judgment de novo." Vanmoor  v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1365, 53 USPQ2d 1377, 1378 (Fed.  Cir. 2000) (citing Petrolite Corp. v. Baker Hughes, Inc., 96 F.3d 1423,  1425, 40 USPQ2d 1201, 1203 (Fed. Cir. 1996)). "Summary judgment is  appropriate when there is no genuine issue as to any material fact and the  moving party is entitled to judgment as a matter of law." Id. Summary  judgment is improper "if the evidence is such that a reasonable jury could  return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc.,  477 U.S. 242, 248 (1986). When ruling on a motion for summary judgment, all  of the nonmovant's evidence is to be credited, and all justifiable  inferences are to be drawn in the nonmovant's favor. See id. at 255. "We  review a trial court's decision on a motion for judgment as a matter of law  following a jury verdict by reapplying its own standard of review." Tec  Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1357, 52 USPQ2d 1294,  1296 (Fed. Cir. 1999).


8
"[A] narrowing amendment made for any reason related to the statutory  requirements for a patent will give rise to prosecution history estoppel  with respect to the amended claim element." Festo, 234 F.3d at 566, 56  USPQ2d at 1870. In support of the patentability of the claims with the "ion  beam source" limitation, Litton initially argued that "the term `ion beam  source' in its original claims could not `properly be construed to refer to  any other ion beam gun but the Kaufman gun.'" Litton II, 140 F.3d at 1453,  46 USPQ2d at 1323. Later, Litton narrowed its claims by amending the term  "ion beam source" to read "Kaufman-type ion beam source." It did so in  direct response to a rejection under 35 U.S.C. § 112, ¶ 2 that the examiner  issued because Litton did not claim what it regarded as its invention. Id.  at 1461, 46 USPQ2d at 1330. A "regards his invention" rejection is clearly  related to the section 112, ¶ 2 statutory requirement for a patent, and,  therefore, Litton's narrowing amendment gives rise to prosecution history  estoppel. See id.; Festo, 234 F.3d at 566, 56 USPQ2d at 1870.


9
"When a claim amendment creates prosecution history estoppel with regard to  a claim element, there is no range of equivalents available for the amended  claim element. Application of the doctrine of equivalents to the claim  element is completely barred (a `complete bar')." Festo, 234 F.3d at 569,  56 USPQ2d at 1872. In Festo, we observed that Litton II had followed the  flexible bar approach, id. at 574, 56 USPQ2d at 1877, and we expressly  repudiated that approach. Id. at 569, 56 USPQ2d at 1872. The law of the  case is a discretionary judicial doctrine that precludes reconsideration of  an issue decided at an earlier stage of litigation unless exceptional  circumstances exist. One such circumstance is when controlling authority  has since made a contrary decision of law applicable to the issue or when  the prior decision was clearly wrong and would work a substantial  injustice. Mendenhall and CMI Corp. v. Barber-Greene Co., 26 F.3d 1573,  1581, 31 USPQ2d 1001, 1007 (Fed. Cir. 1994). Because we have adopted a  contrary rule of law regarding the scope of prosecution history estoppel  for amended claim limitations, the law of the case doctrine does not  preclude us from applying the complete bar adopted en banc in Festo. See  id.


10
Our opinions in Hughes Aircraft Co. v. United States, 86 F.3d 1566, 39  USPQ2d 1065 (Fed. Cir. 1996) (Hughes XIII) and Hughes Aircraft Co. v.  United States, 140 F.3d 1470, 46 USPQ2d 1285 (Fed. Cir. 1998) (Hughes XV)  do not lead to a different result. Hughes XIII explicitly held that Hughes  Aircraft Co. v. United States, 717 F.2d 1351, 219 USPQ 472 (Fed. Cir. 1983)  (Hughes VII) was entirely consistent with our intervening en banc decision  in Pennwalt Corp. v. Durand-Wayland, 833 F.2d 931, 4 USPQ2d 1737 (Fed. Cir.  1987). Hughes XV held that Warner-Jenkinson provides no basis to alter the  decision in Hughes VII because the court properly applied the all-elements  rule. 140 F.3d at 1475, 46 USPQ2d at 1289. In neither case was there  controlling authority that in the interim had made a contrary decision of  law applicable to the relevant issue. We are aware of no decision of this  court that has applied the law of the case in the face of a relevant change  in controlling legal authority. Under Festo's complete bar rule, Litton is  estopped from claiming any equivalents to the "Kaufman-type ion beam gun"  limitation in the disputed claims of the '849 reissue. Festo, 234 F.3d at  569, 56 USPQ2d at 1872. Neither of the accused devices literally possesses  a Kaufman-type ion beam gun, and Litton is completely barred as a matter of  law from asserting that the accused devices meet the "Kaufman-type ion beam  gun" limitation under the doctrine of equivalents. The district court  correctly granted JMOL of non-infringement of the '849 reissue under the  doctrine of equivalents.


11
Based on the JMOL of non-infringement, Litton cannot rely on the patent  infringement claims to support the wrongful means element of its state tort  claims. "Although an appellate court must sustain a jury verdict against a  JMOL if there are any reasonable grounds for the verdict, an appellate  court must also vacate a jury verdict and remand for a new trial if a jury  may have relied on an impermissible basis in reaching its verdict." Litton  II, 140 F.3d at 1465, 46 USPQ2d at 1333 (citations omitted). Having entered  JMOL of non-infringement under the doctrine of equivalents, the district  court should have submitted the tort claims to a jury to resolve the  factual issue of wrongful means. Because the JMOL ruling on the tort claims  impermissibly decided disputed issues of material fact, we reverse the  trial court's grant of JMOL, vacate the jury's verdict, and remand for  further proceedings in accordance with state law.

Conclusion

12
Accordingly, the judgment of the United States District Court for the  Central District of California is affirmed-in-part, reversed-in-part,  vacated-in-part, and remanded.

COSTS

13
Each party shall bear its own costs.


14
AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED


15
BRYSON, Circuit Judge, concurring in part and dissenting in part.


16
I agree with the court that the doctrine of equivalents is inapplicable in  this case, and I therefore concur in the court's decision to affirm the  district court's grant of judgment of non-infringement of the '849 reissue  patent. I dissent, however, from the court's decision to reverse the  district court's judgment with respect to the two state law tort claims,  for essentially the same reasons set forth in my dissenting opinion when  this case was first before the court. See Litton Sys., Inc. v. Honeywell,  Inc., 87 F.3d 1559, 1581-84, 39 USPQ2d 1321, 1337-39 (Bryson, J.,  dissenting). I would affirm the district court in all respects.


17
Litton's claim of intentional interference with contractual relations is  based on contracts between Litton and Ojai Research, Inc., a company owned  by Anthony Louderback, a former Litton employee and one of the inventors of  the `958 patent. In 1981, Ojai and Litton executed two agreements governing  their relationship and Louderback's use of the '958 patent process. The  first agreement, the "Consulting Services Contract," was in effect between  1981 and 1983. The other agreement, the "Technical Assistance and License  Agreement" (License Agreement), which had a 15-year duration, prohibited  Louderback from using the patented process to make ring laser gyroscope  mirrors for anyone but Litton.


18
Because the Consulting Services Contract expired in February 1983, at least  one year before Honeywell contacted Louderback to obtain mirrors, the only  agreement that is at issue here is the License Agreement. The License  Agreement identifies the Consulting Services Contract as a separate  agreement and does not purport to extend the terms of the Consulting  Services Contract past February 1983. The district court noted that the  only conduct by Louderback that Litton asserted as breaching the License  Agreement was Louderback's alleged infringement of the reissue patent and  his use of the sliding-target mechanism to make mirrors for Honeywell in  1985. Because the district court properly concluded that no infringement  occurred, any breach of the License Agreement must be based on Louderback's  use of the sliding-target mechanism.


19
Use of the sliding-target mechanism did not breach the License Agreement.  It is not among the specifically enumerated items of "Technical  Information" that Schedule B of the agreement identifies as proprietary to  Litton, and it was not shown to be a design change based on protected  information that would constitute a "Modification and Improvement" under  the agreement. The License Agreement makes clear that it does not reach  "completely new or different designs."


20
There is also no evidence that the sliding-target mechanism became Litton's  property pursuant to the Consulting Services Contract. The Consulting  Services Contract provides that "Litton shall have all rights . . . in all  inventions, developments, and discoveries (whether or not patented) which  Consultant may conceive or make . . . during any work by Consultant for  Litton." Both Litton and Louderback, however, recognized that even during  the two-year consulting period Louderback would be doing independent work,  and the Consulting Services Contract does not reach developments made by  Louderback working independently. Litton did not prove that the sliding-  target mechanism was developed during any work for Litton. Louderback  testified that he regarded the sliding-target mechanism as his own  property, and that he maintained it separately from the Litton process that  he operated under license from Litton. Moreover, the mechanism had been  previously disclosed in a 1977 patent and was therefore publicly known.


21
Litton also contends that Louderback breached his contractual obligations  when he failed to disclose certain improvements in the mirror-making  process to Litton. The record, however, contains no evidence that Honeywell  induced Louderback not to disclose the information in question to Litton.  Rather, the record suggests only that Louderback did not disclose that  information to Litton because he believed it to be his own trade secret.


22
Litton's second tort claim, interference with prospective economic  advantage, fails because the record does not contain substantial evidence  that Honeywell used "wrongful means," as is required by that tort. Both the  district court and this court in the first appeal determined that the  alleged wrongful means were either an act of infringement or an inducement  to breach Louderback's contractual obligations to Litton. See 87 F.3d at  1575, 39 USPQ2d at 1332. We have now held that no infringement occurred  and, as explained above, the record fails to show that there was any  inducement to breach. The "interference" claim is therefore unsupported by  the evidence at trial.


23
Aside from the issue of wrongful means, the interference tort also requires  a showing that Honeywell intentionally acted to disrupt Litton's business  relationship with Louderback. This court in the first Litton case found  evidence of that conduct only in the acts of infringement and intentional  interference with contractual relations between Louderback and Litton. See  87 F.3d at 1575, 39 USPQ2d at 1331. As neither of those acts has been  proved, the interference tort fails on that basis as well.


24
Accordingly, the district court was correct in entering judgment as a  matter of law on the two state tort claims; I therefore dissent from this  court's decision to reverse that portion of the district court's judgment.

