OPENWAVE SYSTEMS, INC. v. APPLE INC. (Fed. Cir. 2015) (P) – Disparaged combinations in the specification will be generally found to be disclaimed from the claim scope

by | Dec 15, 2015 | [sub] specification, Estoppel / Disclaimer

Any combination that is thoroughly disparaged in the specification will be generally found to be disclaimed from the ultimate claim scope. Here, for example, the fact that the specification was rife with remarks that disparage more complex mobile devices incorporating...

ATLAS IP, LLC v. ST. JUDE MEDICAL, INC. (Fed. Cir. 2015) (P) – Soft language such as “approximately” can provide wiggle room for different modes of operation

by | Oct 29, 2015 | [sub] specification, Estoppel / Disclaimer

Soft language such as “approximately” can provide wiggle room for different modes of operation. Here, for example, the claimed communication cycle invention was not found to be inoperable without the hub sending start-time information to a remote device before each...

INLINE PLASTICS CORP. v. EASYPAK, LLC (Fed. Cir. 2015) (P) – Characterization of the prior art that does not form the basis of an argued distinction is not a disclaimer

by | Aug 27, 2015 | [sub] prosecution history, Estoppel / Disclaimer

Mere characterization of the prior art that does not form the basis of an argued distinction does not rise to the level of prosecution history disclaimer. Here, for example, the patentee’s characterization of the prior art as including only a single perforation line...

TEVA PHARMACEUTICALS USA v. SANDOZ INC. (Fed. Cir. 2015) (P) – Prosecution history estoppel applies regardless of the scientific accuracy of the statements made

by | Jun 18, 2015 | [sub] prosecution history, Estoppel / Disclaimer

A statement made during prosecution may be used to define a claim term regardless of the scientific accuracy of that statement. Here, for example, in response to identical indefiniteness rejections in separate child applications regarding the claim term “molecular...

GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN (Fed. Cir. 2015) (NP) – Physical space constraints are not dispositive of how a patentee is required to mark its commercial article

by | Jun 4, 2015 | [sub] marking, Estoppel / Disclaimer

Physical space constraints are not dispositive of whether a patentee is required to mark its commercial article rather than its packaging. Here, for example, a traffic control system was found to be adequately marked by its packaging rather than its components even...

INTERDIGITAL v. ITC (Fed. Cir. 2015) (NP) – Definitive terms such as “always” designate the corresponding characteristic as universal to the invention

by | Feb 18, 2015 | [sub] specification, Estoppel / Disclaimer

Use of definitive terms such as “always” indicates that the corresponding characteristic is universal to the invention. Here, for example, the claimed “power control bit” was found to be limited to a single-bit power control command because the specification described...