A statement directly or indirectly incorporated into the specification that the presence of a particular feature is “universal to all the embodiments” or is “an essential element among all embodiments or connotations of the invention” constitutes a clear and unmistakable disavowal of claim scope.
Background / Facts: The patents being asserted here are directed to circuit structures for shielding electrodes to reduce the undesirable buildup of charge, known as “parasitic capacitance,” between electrodes used for conduction. Although claimed more broadly, the specification states that a so-called “sandwich” configuration—an arrangement of three electrodes in which a center conductor is flanked by a pair of differential conductors—is “an essential element among all embodiments or connotations of the invention,” and a statement incorporated by reference into the specification states that this configuration is a “feature[] universal to all the embodiments.”
Issue(s): Whether labeling certain features as “essential” or “universal” to all embodiments rises to the level of disavowal.
Holding(s): Yes. “[N]ot only does the specification state that the ‘center common conductive pathway electrode’ flanked by two differential conductors is ‘essential,’ but it also spells out that it was an ‘essential element among all embodiments or connotations of the invention.’ … The [] patent’s statement that the sandwich configuration is a ‘feature[] universal to all the embodiments’ reinforces this conclusion.” With regard to some of the statements deriving from incorporations by reference to priority documents, although the court acknowledged that “it is certainly possible that a clear and unmistakable disavowal in an incorporated patent is no longer so when placed in the context of the disclosure of the host patent,” it ultimately found that “[t]his, however, is not that case” under the present set of facts.