TEVA PHARMACEUTICALS USA v. SANDOZ INC. (Fed. Cir. 2015) (P) – Prosecution history estoppel applies regardless of the scientific accuracy of the statements made

by | Jun 18, 2015 | [sub] prosecution history, Estoppel / Disclaimer

A statement made during prosecution may be used to define a claim term regardless of the scientific accuracy of that statement. Here, for example, in response to identical indefiniteness rejections in separate child applications regarding the claim term “molecular...

FENNER INVESTMENTS, LTD. v. CELLCO PARTNERSHIP (Fed. Cir. 2015) (P) – Statements during prosecution are relevant to claim interpretation even when not relied on by the examiner

by | Feb 12, 2015 | [sub] prosecution history, Estoppel / Disclaimer

A patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation. Here, for example, statements on the record that a “personal identification number” distinguishes over the prior art by being user- rather than...

EMD MILLIPORE CORPORATION v. ALLPURE TECHNOLOGIES, INC. (Fed. Cir. 2014) (P) – Broadening amendments do not preclude prosecution history estoppel for other narrowing amendments

by | Sep 30, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Broadening amendments in conjunction with narrowing amendments do not preclude the presumption that prosecution history estoppel applies. Here, for example, broadening a use requirement for a particular transfer member element did not preclude the presumption that...

GAMMINO v. SPRINT COMMUNICATIONS COMPANY (Fed. Cir. 2014) (NP) – Prosecution statements characterizing all elements of a set preclude enforcement against a subset

by | Aug 15, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Repeated and unqualified statements in the prosecution history that the claimed invention treats all elements of a set in a certain manner may preclude enforcement against a system that selectively operates on a subset of those elements. For example, as here, stating...

GOLDEN BRIDGE TECHNOLOGY v. APPLE INC. (Fed. Cir. 2014) (P) – Submission of applicant’s own or acquiesced remarks in an IDS may constitute disclaimer

by | Jul 14, 2014 | [sub] prosecution history, Estoppel / Disclaimer

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,...

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION (Fed. Cir. 2014) (P) – Prosecution statements in unrelated applications cannot be used to interpret claims

by | Jun 27, 2014 | [sub] prosecution history, Estoppel / Disclaimer

This case reaffirms Pfizer v. Ranbaxy that “statements made during prosecution of [a] later, unrelated [] patent cannot be used to interpret claims of [another] patent.” Further, because prosecution focuses on “what [a reference] discloses” whereas claim construction...