PROFOOT, INC. v. MERCK & CO., INC. (Fed. Cir. 2016) (NP) – Minor differences in claim language between parent and child patents do not require distinct interpretation

by | Oct 27, 2016 | [sub] prosecution history, Estoppel / Disclaimer

Minor differences in claim language between parent and child patents are not sufficient to secure a different interpretation. Here, for example, the “neutralizer” claimed in a child patent was interpreted as requiring all the components recited in the claims of a...

POLY-AMERICA, L.P. v. API INDUSTRIES, INC. (Fed. Cir. 2016) (P) – Disparaging a particular feature in the prior art generally constitutes a disclaimer of that feature

by | Oct 14, 2016 | [sub] specification, Estoppel / Disclaimer

Disparaging a particular feature in the prior art generally constitutes a disclaimer of that feature in the claimed invention. Here, for example, a trash bag with so-called “short seals” in its upper corners was found to be limited to a design in which the short seals...

UCB, INC. v. YEDA RESEARCH AND DEVELOPMENT (Fed. Cir. 2016) (P) – Unentered claims may prevent other claims from being interpreted to encompass the same subject matter

by | Sep 8, 2016 | [sub] prosecution history, Estoppel / Disclaimer

Claims denied entry during prosecution for including new matter may prevent other claims from being later interpreted to encompass the same subject matter. Here, for example, claims directed to a particular species of cytotoxin that were rejected during prosecution...

GPNE CORP. v. APPLE INC. (Fed. Cir. 2016) (P) – Both repeated and summation characterizations of the invention serve to limit the invention as a whole

by | Aug 1, 2016 | [sub] specification, Estoppel / Disclaimer

Both repeated and summation characterizations of the invention serve to limit the invention as a whole. Here, for example, the generic term “node” was found to be limited to a “pager … that operates independently from a telephone network” because the specification...

UNWIRED PLANET, LLC v. APPLE INC. (Fed. Cir. 2016) (P) – Descriptions only tangentially related to characterizing “the present invention” are not limiting per se

by | Jul 22, 2016 | [sub] specification, Estoppel / Disclaimer

Descriptions that are only tangentially related to characterizations of “the present invention” should not be read as constituting a mandatory claim limitation to be read into the claims. Here, for example, a statement about the “present invention” in the first...

RUCKUS WIRELESS, INC. v. INNOVATIVE WIRELESS SOLUTIONS (Fed. Cir. 2016) (P) – Broadening statements in the specification may act as a ceiling for claim breadth

by | May 31, 2016 | [sub] specification, Estoppel / Disclaimer

Broadening statements in the specification may act as a ceiling for claim breadth. Here, for example, the claimed “communications path” was found to be limited to wired communication at the exclusion of wireless communication because the specification, in asserting...