In general, although the “mere disclosure of potentially material prior art to the [PTO] does not automatically limit the claimed invention,” “an applicant’s remarks submitted with an [IDS] can be the basis for limiting claim scope.” In particular, as here, submissions during prosecution of a stipulated construction for a given claim term constitute disclaimer. To walk the line between the duty of disclosure and prosecution disclaimer, it may be best to submit (if necessary) any such remarks stemming from the applicants themselves along with a statement specifically notifying the PTO that a different meaning is being sought for the claim term at issue. The court expressly recognized that “our precedent allows applicants to rescind a disclaimer during prosecution.”
Background / Facts: The patent being asserted here arises from a reexamination following prior litigation and is directed to random access procedures in a wireless telecommunications system. To establish communication between a mobile station and a base station, the mobile station transmits a known signal called a “preamble” over a random access channel (RACH). In the prior litigation, the patentee stipulated to a construction of the term “preamble” as “a signal used for communicating with the base station that is spread before transmission.” Although the stipulated claim construction order was submitted to the PTO in an IDS as part of the reexamination proceedings, the claims were amended in an attempt to broaden the preamble limitation by separately reciting the spreading operations.
Issue(s): Whether submission of the stipulated construction to the PTO in an IDS constitutes a disclaimer of the broader claim scope sought.
Holding(s): Yes. Although it is correct that “mere disclosure of potentially material prior art to the [PTO] does not automatically limit the claimed invention,” the court found that “this is not a typical IDS, and [the patentee] did more than simply disclose potentially material prior art” because “[i]t submitted its own stipulated construction of a claim term in the context of the particular patents being reexamined [] and prosecuted []. This is a clear and unmistakable assertion by the patentee to the PTO of the meaning and scope of the term preamble. The fact that the stipulation was contained in documents accompanying an IDS does not change this result. We have held that ‘an applicant’s remarks submitted with an [IDS] can be the basis for limiting claim scope.’”