This case reaffirms Pfizer v. Ranbaxy that “statements made during prosecution of [a] later, unrelated [] patent cannot be used to interpret claims of [another] patent.” Further, because prosecution focuses on “what [a reference] discloses” whereas claim construction “is not generally limited to the embodiments disclosed,” a broader claim construction is not generally inconsistent with prosecution statements regarding the patent’s explicit teachings and specific embodiments.
Background / Facts: The patents being asserted here are directed to systems for enabling hospital personnel to remotely monitor the status of hospital beds. In construing certain claim terms, the district court limited the claimed “bed condition message” to exclude messages that were user-prompted, as well as messages that conveyed only a subset of all available status conditions. The district court’s construction was based entirely upon its conclusion that a broader construction was preempted by judicial estoppel arising from the patentee’s statements during prosecution of another, commonly-owned although unrelated application. In that case, the patent being asserted here (more specifically, a family member thereof sharing a common specification) was cited as prior art. In response, the patentee stated that it was “quite familiar with the [cited] reference” and “[i]n [those] systems, user[s] cannot request specific subsets of data be transmitted without transmitting other available data subsets.” Instead, “[t]he data transmissions in [the cited] system happen in response to periodic programmed polling by individual electronic devices of the system, not in response to any user request.”
Issue(s): Whether the district court’s narrowing construction was warranted based on the patentee’s otherwise inconsistent statements made during prosecution of its later, unrelated application.
Holding(s): No. “We conclude that there are several errors in this analysis. As an initial matter, we decided this issue in Pfizer, Inc. v. Ranbaxy Laboratories, Inc., … [where] [w]e held that ‘statements made during prosecution of the later, unrelated [] patent cannot be used to interpret claims of [another] patent.’ … We see no reason to question the rule in Pfizer, and, in any event, we are bound by prior panel decisions.” Further, the court went on to emphasize that claim construction in one patent is not generally inconsistent with statements regarding that application’s explicit teachings and specific embodiments. “None of the statements [the patentee] made during the [other] patent’s prosecution purport to define ‘bed condition message.’ Instead, they generally describe the disclosure of the [patent at issue]. … Acknowledging that [the present patent] does not teach transmitting a subset of bed conditions … is not a clear limitation of claim scope. A patent is used as prior art in an anticipation or obviousness rejection for what it discloses. By contrast, the scope of the claims is not generally limited to the embodiments disclosed in the patent.”