U.S. Patent Nos. 6,884,434 and 8,232,414 are directed to transdermal rotigotine with an absence of water and a polymorph of rotigotine (page 2). One claim recites a “matrix … based on an acrylate-based or silicone-based polymer adhesive system” (pages 8-9). The accused product uses a polyisobutylene adhesive (page 9). The claims were not amended but a restriction election with traverse was made (pages 9-10). The withdrawn claims were not limited to acrylate-based or silicone-based polymer adhesive, so it was argued that equivalents cannot be applied for infringement of acrylate-based or silicone-based polymer adhesive (page 10). The restriction did not relate to polyisobutylene adhesive, patentability was not being addressed, and using broader claim language would not have avoided restriction, so there is not surrender of equivalents (page 11). While polyisobutylene adhesive may have been foreseeable, the specification does not rely on specific characteristics of acrylate-based or silicone-based polymer adhesive (e.g., no distinction of specific subsets) (pages 14-16). There was not surrender of equivalents (pages 14-16). Polyisobutylene adhesive as equivalent does not vitiate the acrylate-based or silicone-based polymer adhesive limitation since polyisobutylene adhesive specifically was found equivalent (page 18).
Hindsight: Having to make equivalents arguments may have been avoided by not limiting claims to specific adhesives. If a list is to be used, it may be beneficial to include all possible members. It may be worthwhile to consider restriction response effects on equivalents, such as making a statement that the election is not intended to narrow meaning of the elected claims and dealing with the distinction between elected and non-elected claims where the distinction is specific.