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 Steve Driskill | 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...

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 Steve Driskill | 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...

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...

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...

INLINE PLASTICS CORP. v. EASYPAK, LLC (Fed. Cir. 2015) (P) – Characterization of the prior art that does not form the basis of an argued distinction is not a disclaimer

by Steve Driskill | Aug 27, 2015 | [sub] prosecution history, Estoppel / Disclaimer

Mere characterization of the prior art that does not form the basis of an argued distinction does not rise to the level of prosecution history disclaimer. Here, for example, the patentee’s characterization of the prior art as including only a single perforation line...