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...
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...
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...
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...
by Steve Driskill | Aug 23, 2013 | [sub] specification, Estoppel / Disclaimer
The lesson here is probably above all a cautionary tale about loose language. In its full context, it appears that the patentee was merely providing examples of conventional methods used for two-dimensional culturing and not intending to disclaim any particular method...
by Steve Driskill | Jun 3, 2013 | [sub] specification, Estoppel / Disclaimer
Limiting the definition of a claim term based on characterizations of the “invention” have no application where, as here, the other statements and illustrations make it clear that the limitations do not describe the invention as a whole. Nevertheless, it undoubtedly...
