Prosecution-based surrenders of claim scope can be cut off from impacting related patents by a sufficient showing of distinction among the patents to compel a different reading, such as changes in claim terminology or even in the specification when the later application is a CIP.
Background / Facts: The patents here concern a graphical user interface that can display essential data from a commodities market and allow a user to enter electronic trade orders on an exchange. In particular, the disclosed graphical user interfaces offer a logical and intuitive means to convey dynamic market information using bid, ask, and inside market indicators that visually track ongoing price fluctuations along the price column. Following an adverse claim construction in prior litigation of one of the patents that gave a narrow interpretation to the claim term “static,” the patentee used a CIP application to pursue an intentionally broader scope where the clarification in the parent application that static price levels “do not move” was omitted.
Issue(s): Whether the patentee’s earlier prosecution-based surrender of any subject matter that moves automatically carries through from the prior patents to limit the enforceable scope of the CIP patent.
Holding(s): No. “Prosecution history estoppel can extend from a parent application to subsequent patents in the same lineage, … as can a prosecution disclaimer. … But ‘arguments made in a related application do not automatically apply to different claims in a separate application.’ … In general, the prosecution history regarding a particular limitation in one patent is presumed to inform the later use of that same limitation in related patents, ‘unless otherwise compelled.’ … In this case, the intrinsic record specific to the [CIP] patent distinguishes [the interpretation in the prior litigation] and compels a different result. The [CIP] patent, as a continuation-in-part of the [parent] patent, includes extensive disclosures that were not present in the [related] patents, and those subsequent disclosures directly contradict the prosecution-based surrenders of claim scope discussed in [the prior litigation].”