A patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation. Here, for example, statements on the record that a “personal identification number” distinguishes over the prior art by being user- rather than device-centric was found to limit any otherwise plain meaning of this term even though this distinction was not the basis for the ultimate grant of the patent. “[T]he interested public has the right to rely on the inventor’s statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given.” It may therefore be worth considering, in addition to avoiding unnecessary characterizations of the invention or the claims, to also disclaim prior positions on the record if the focus of the distinctions over the prior art shifts during prosecution.
Background / Facts: The patent being asserted here is directed to personal communication services (PCS) systems, whereby each user of a particular device has a “personal identification number” by which call servicing and billing are identified with the user, and not with a particular telephone unit. Although the patentee argues that the plain meaning of “personal identification number” does not contain or require this user-centric definition, the prosecution history attempts to distinguish over certain prior art in that “[t]he present invention, on the other hand, is centered around the mobile user, not the mobile telephone. The user is identified by a personal code. Furthermore, the mobile user need not be, unlike a mobile telephone, assigned to a particular home exchange.”
Issue(s): Whether these statements made during prosecution limit the claims even though the limitations discussed were not the basis for the ultimate grant of the patent.
Holding(s): Yes. “[The patentee] argues that these purportedly limiting statements he made during prosecution do not limit the claims, arguing that the statements and the limitations discussed were not the basis for grant of the patent. However, the interested public has the right to rely on the inventor’s statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given. … The fact that an examiner placed no reliance on an applicant’s statement distinguishing prior art does not mean that the statement is inconsequential for purposes of claim construction.”