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...

PLANTRONICS, INC. v. ALIPH, INC. (Fed. Cir. 2013) (P) – Estoppel attached to ambiguous restriction requirements

by Steve Driskill | Jul 31, 2013 | [sub] prosecution history, Estoppel / Disclaimer

For prosecution history estoppel to apply, the patentee must make a “clear and unmistakable” disavowal of claim scope. “The election of an invention in response to an ambiguous restriction requirement in turn cannot be said to provide any guidance forming a basis for...

REGENTS OF UNIV. OF MINNESOTA v. AGA MEDICAL CORPORATION (Fed. Cir. 2013) (P) – Prosecution disclaimer among related applications

by Steve Driskill | Jun 3, 2013 | [sub] prosecution history, Estoppel / Disclaimer

In general, a prosecution disclaimer will only apply to a subsequent patent if that patent contains the same claim limitation as its predecessor. “If the language of the later limitation is significantly different, the disclaimer will not apply.” This suggests that...

BIOGEN IDEC INC. v. GLAXOSMITHKLINE LLC (Fed. Cir. 2013) (P) – Prosecution history estoppel

by Steve Driskill | Apr 16, 2013 | [sub] prosecution history, Estoppel / Disclaimer

It is well established that “it is the applicant, not the examiner who must give up or disclaim subject matter,” and generally remaining silent when confronted by statements made by the examiner during prosecution (e.g., reasons for allowance) is not sufficient to...

CAPITAL MACHINE COMPANY, INC. v. MILLER VENEERS, INC. (Fed. Cir. 2013) (NP) – Prosecution history estoppel

by Steve Driskill | Apr 15, 2013 | [sub] prosecution history, Estoppel / Disclaimer

Your arguments during prosecution should focus on (and mainly quote verbatim) the language of the claims, not the “invention” as a whole. Certainly, do not expressly characterize the “invention” as a whole with narrower terms than those used in the claims. Background...