by Steve Driskill | Apr 8, 2013 | [sub] prosecution history, Estoppel / Disclaimer
The lesson here is to never argue more than you have to. “[T]he doctrine of prosecution history estoppel prevents a patent owner from recapturing through the doctrine of equivalents subject matter surrendered [e.g., by attorney argument during prosecution] to acquire...
by Steve Driskill | Apr 4, 2013 | [sub] corresponding structure, [sub] prosecution history, Estoppel / Disclaimer, Means Plus Function
(1) In terms of prosecution history estoppel, although a prosecution disclaimer requires “clear and unambiguous disavowal of claim scope,” the court has recognized that “applicants rarely submit affirmative disclaimers along the lines of ‘I hereby disclaim the...
by Steve Driskill | Mar 20, 2013 | [sub] prosecution history, Estoppel / Disclaimer
An express disclaimer during prosecution prevents a patentee from “attempting to recapture disclaimed subject matter by isolating and selecting individual components of the accused” product. While the result may have seemed fair in this particular case, the court’s...
by Steve Driskill | Aug 22, 2012 | [sub] prosecution history, Estoppel / Disclaimer
This case highlights another facet to the perils of prosecution history estoppel – not only can it be used against you in litigation, but it can also be used against you at the PTO if you need to broaden your claims at a later date through reissue. Remember, you are...
by Steve Driskill | Aug 15, 2012 | [sub] common terms, [sub] prosecution history, Claim Interpretation, Estoppel / Disclaimer
The main lesson here is that a “device” is a broad term and may be interpreted as being composed of several constituent components, perhaps even seemingly disparate components (e.g., while the “memory device” could not include the CPU, it could include a memory...
by Steve Driskill | Jul 30, 2012 | [sub] prosecution history, Estoppel / Disclaimer
I think the big picture lesson here is twofold: (1) avoid saying more than is necessary to distinguish over the art, and (2) try to limit your characterizations to the art itself rather than the claimed invention. The patentee in this case did just that and no...
