FRANS NOOREN AFDICHTINGSSYSTEM v. STOPAQ AMCORR INC. (Fed. Cir. 2014) (P) – Prosecution history disclaimer / estoppel based on examiner commentary on the prior art

by Steve Driskill | Feb 21, 2014 | [sub] prosecution history, Estoppel / Disclaimer

An examiner’s interpretation of the prior art by itself is not sufficient to warrant prosecution history disclaimer or estoppel. Background / Facts: The patent being asserted here is directed to protecting substrates – for example, manhole covers, underground tanks,...

ASTRAZENECA AB v. HANMI USA, INC. (Fed. Cir. 2013) (NP) – Characterizing “the invention”

by Steve Driskill | Dec 19, 2013 | [sub] specification, Estoppel / Disclaimer

Another reminder that it is generally not good practice to characterize “the invention” as relating to any particular embodiments. By “conspicuously choosing only certain members of [a] class,” and referring to them as “the invention,” the patentee will be considered...

INTEGRATED TECHNOLOGY CORP. v. RUDOLPH TECHNOLOGIES, INC. (Fed. Cir. 2013) (P) – Tangential relation exception to prosecution history estoppel

by Steve Driskill | Nov 4, 2013 | [sub] prosecution history, Estoppel / Disclaimer

It is not necessarily true that “equivalents not within the prior art must be tangential to the amendment.” As here, an equivalent may be outside the scope of the prior art and the prior art may operate in the same way as the claimed invention. Nevertheless,...

ASTRAZENECA LP v. BREATH LIMITED (Fed. Cir. 2013) (NP) – Characterizing “the invention”

by Steve Driskill | Oct 30, 2013 | [sub] specification, Estoppel / Disclaimer

While sufficiently ambiguous to escape harm in this instance, it is generally not good practice to characterize “the invention” as relating to any particular embodiment. It did, after all, take an appeal to the Federal Circuit to overturn a district court’s...

SUNOVION PHARMACEUTICALS v. TEVA PHARMACEUTICALS USA (Fed. Cir. 2013) (P) – Characterizing the “invention” during prosecution

by Steve Driskill | Sep 26, 2013 | [sub] prosecution history, Estoppel / Disclaimer

The definition of a claim term can be affected through “repeated and definitive remarks” in the prosecution history. In particular, a patentee will usually be bound by any characterizations of the “invention” as a whole. Background / Facts: The patents here are...

TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC (Fed. Cir. 2013) (P) – Prosecution-based surrender of claim scope among related applications

by Steve Driskill | Aug 30, 2013 | [sub] prosecution history, Estoppel / Disclaimer

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...