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...

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,...

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,...