DAVID NETZER CONSULTING v. SHELL OIL COMPANY (Fed. Cir. 2016) (P) – Distinguishing the claimed invention from conventional implementations may constitute a clear disclaimer

by Steve Driskill | May 27, 2016 | [sub] prosecution history, Estoppel / Disclaimer

Distinguishing the claimed invention from conventional implementations may constitute a clear disclaimer that one or more claim limitations do not cover such conventional implementations. Here, for example, the claimed “fractionating” was found to exclude conventional...

CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG (Fed. Cir. 2016) (NP) – The disclosure-dedication rule does not require an explicit labeling of “alternative” embodiments

by Steve Driskill | Mar 22, 2016 | [sub] doctrine of equivalents, [sub] specification, Claim Interpretation, Estoppel / Disclaimer

The disclosure-dedication rule does not require that the specification explicitly label which embodiments are “alternatives” to bar otherwise apparent alternatives from infringement under the doctrine of equivalents. Here, for example, even though the specification...

BAMBERG v. DALVEY (Fed. Cir. 2016) (P) – Distinguishing prior art as “undesired” may limit the scope of the claims

by Steve Driskill | Mar 9, 2016 | [sub] specification, [sub] written description, Adequate Disclosure, Estoppel / Disclaimer

Distinguishing the prior art as “undesired” is equivalent to distinguishing it as “inferior” and may therefore limit the scope of the claims as necessarily excluding the undesired features. Here, for example, a broad claim added during an interference to cover a...

SECURE WEB CONFERENCE CORP. v. MICROSOFT CORPORATION (Fed. Cir. 2016) (NP) – Touting a characteristic of a claimed feature as advantageous without counterexamples renders it essential

by Steve Driskill | Feb 17, 2016 | [sub] specification, Estoppel / Disclaimer

Repeatedly touting a particular characteristic of a claimed feature as being advantageous without providing any broader embodiments reinforces that characteristic as essential. Here, for example, a “security device” was found to be limited to a stand-alone device that...

TRIVASCULAR, INC. v. SAMUELS (Fed. Cir. 2016) (P) – Arguments during prosecution about ultimately discarded amendments do not constitute disclaimer

by Steve Driskill | Feb 5, 2016 | [sub] prosecution history, Estoppel / Disclaimer

Arguments concerning an amendment proposed during prosecution but not ultimately part of the issued claims do not rise to the level of prosecution history disclaimer. Here, for example, the patentee’s initial arguments and amendments clarifying that the claimed...

AVID TECHNOLOGY, INC. v. HARMONIC, INC. (Fed. Cir. 2016) (P) – A statement disclaiming a set of features does not establish disclaimer of any one feature in isolation

by Steve Driskill | Jan 29, 2016 | [sub] prosecution history, Estoppel / Disclaimer

A statement during prosecution disclaiming a set of features in concert does not establish disclaimer of any one of those features in isolation. Here, for example, the patentee’s statement during prosecution that the claimed invention does not require a central...