LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. (Fed. Cir. 2014) (NP) – Open-ended claim terms may be limited by specification

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

Use of open-ended terms such as “including” does not “trump[] consideration of the specification and prosecution history and displace application of standard claim construction principles.” To the contrary, “it is well-established that claim terms must be construed in...

GEMALTO S.A. v. HTC CORPORATION (Fed. Cir. 2014) (P) – Limitations imposed by an espoused purpose of the invention

by Steve Driskill | Jun 19, 2014 | [sub] specification, Estoppel / Disclaimer

Claim terms may be limited by an espoused “purpose of the invention” where the specification demonstrates that a particular shortcoming “was a defining feature of [the] prior art,” and that “the patented invention was designed to eliminate” that shortcoming, under the...

UNITED VIDEO PROPERTIES, INC. v. AMAZON.COM, INC. (Fed. Cir. 2014) (NP) – Prosecution history disclaimer as limiting broadening statements in the specification

by Steve Driskill | Apr 8, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Broadening statements in the specification are generally insufficient to overcome a corresponding clear disavowal in the prosecution history. It may therefore be wise to cite to those statements during prosecution (e.g., to combat a written description rejection)...

E2INTERACTIVE, INC. v. BLACKHAWK NETWORK, INC. (Fed. Cir. 2014) (NP) – Prosecution disclaimer based on argued dstinctions over the prior art

by Steve Driskill | Mar 12, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Unambiguously arguing that the claimed invention is allowable over certain prior art because the prior art fails to disclose a particular feature implies that this feature is a required part of the claimed invention, and is sufficient to satisfy the clear and...

ANCORA TECHNOLOGIES, INC. v. APPLE, INC. (Fed. Cir. 2014) (P) – Inaccurate examiner statements and the sliding scale of claim term disclaimer

by Steve Driskill | Mar 3, 2014 | [sub] prosecution history, [sub] specification, Estoppel / Disclaimer

For disclaimer to attach to a given claim term, there must be a clear and unmistakable disavowal of claim scope by the applicant. Comments by other parties, such as the examiner in his or her reasons for allowance, are not by themselves sufficient to rise to the level...

STARHOME GMBH v. AT&T MOBILITY LLC (Fed. Cir. 2014) (P) – Related foreign prosecution history

by Steve Driskill | Feb 24, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Although the Federal Circuit has “cautioned against indiscriminate reliance on foreign file histories,” it has acknowledged that “statements made before foreign patent offices are sometimes relevant to interpreting the claims.” This is particularly true where, as...