GAMMINO v. SPRINT COMMUNICATIONS COMPANY (Fed. Cir. 2014) (NP) – Prosecution statements characterizing all elements of a set preclude enforcement against a subset

by Steve Driskill | Aug 15, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Repeated and unqualified statements in the prosecution history that the claimed invention treats all elements of a set in a certain manner may preclude enforcement against a system that selectively operates on a subset of those elements. For example, as here, stating...

ALBECKER v. CONTOUR PRODUCTS, INC. (FL) (Fed. Cir. 2014) (NP) – Use of disjunctive “or” in describing set of features may imply that the features are alternatives

by Steve Driskill | Aug 7, 2014 | [sub] specification, Estoppel / Disclaimer

Use of a disjunctive “or” in describing a set of features may be used to infer that the features are alternatives to one another. Although this may not be sufficient to establish that such alternatives are mutually exclusive in a given embodiment, it may imply that...

AMDOCS LIMITED v. OPENET TELECOM, INC. (Fed. Cir. 2014) (P) – Universal and advantageous embodiment features may be read Into related claim terms

by Steve Driskill | Aug 1, 2014 | [sub] specification, Estoppel / Disclaimer

Although limitations from the specification should not ordinarily be imported into the claims, “the embodiments define the outer limits of the claim term.” Thus, when a certain feature is present in all the embodiments and touted as advantageous, it may be reasonably...

GOLDEN BRIDGE TECHNOLOGY v. APPLE INC. (Fed. Cir. 2014) (P) – Submission of applicant’s own or acquiesced remarks in an IDS may constitute disclaimer

by Steve Driskill | Jul 14, 2014 | [sub] prosecution history, Estoppel / Disclaimer

In general, although the “mere disclosure of potentially material prior art to the [PTO] does not automatically limit the claimed invention,” “an applicant’s remarks submitted with an [IDS] can be the basis for limiting claim scope.” In particular, as here,...

X2Y ATTENUATORS, LLC v. ITC (Fed. Cir. 2014) (P) – Labeling certain features as “essential” or “universal” to all embodiments constitutes disavowal

by Steve Driskill | Jul 7, 2014 | [sub] specification, Estoppel / Disclaimer

A statement directly or indirectly incorporated into the specification that the presence of a particular feature is “universal to all the embodiments” or is “an essential element among all embodiments or connotations of the invention” constitutes a clear and...

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION (Fed. Cir. 2014) (P) – Prosecution statements in unrelated applications cannot be used to interpret claims

by Steve Driskill | Jun 27, 2014 | [sub] prosecution history, Estoppel / Disclaimer

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...