iAddressing the issue of prosecution disclaimer, the U.S. Court of Appeals for the Federal Circuit affirmed the lower court’s claim construction ruling, finding that arguments made during prosecution to traverse a restriction requirement amounted to a clear and unmistakable disavowal of claim scope. Uship Intellectual Properties, LLC v. U.S., Case No. 12-5077 (Fed. Cir., May 8, 2013) (Moore, J.).
Plaintiff Uship appealed a ruling of the trial court finding no infringement of two related patents owned by Uship. The patents are directed to systems and methods of processing packages for shipment. The preamble of the claims recited a “method of mailing parcels and envelopes using an automated shipping machine,” including the claimed step of “validating receipt of said parcel.” The central issue on appeal was whether the scope of the claimed “validating” step only covers the step being carried out by an automated shipping machine or whether it covers the step being performed by a human being.
The Federal Circuit found that the “validating” step was limited to an automated shipping machine in view of a disclaimer made during prosecution of the parent application of the asserted patents. During prosecution of the parent application, the examiner required the applicant to restrict the invention to one of two distinct inventions, a method and an apparatus, covered by the application claims. The applicant traversed the restriction requirement, arguing that all of the claims were drawn to a single invention because the steps of the method claims all require use of an automated machine, as recited in the preamble of the claims.
The Federal Circuit found this to be a clear and unmistakable disclaimer of claim scope. The examiner was persuaded by the applicant’s arguments and the restriction requirement was overcome, and, thus, the Court concluded that a competitor would reasonably conclude that the applicant clearly and unmistakably limited all of the method claim steps to performance by an automated shipping machine. The fact that the applicant may have given up more than was necessary does not render the disclaimer ambiguous, noted the Court.
The Federal Circuit rejected Uship’s argument that prosecution disclaimer only applies when applicants attempt to overcome a claim rejection. The Court summarized its body of law on prosecution disclaimer by asserting that an applicant’s statements to the U.S. Patent and Trademark Office (PTO) characterizing its invention may give rise to a prosecution disclaimer. Statements leading to prosecution disclaimer can arise in responses made to claim rejections, but they may also arise in other contexts, such as remarks submitted with an Information Disclosure Statement. The Federal Circuit held that arguments made in response to a restriction requirement may be a source of prosecution disclaimer.
While siding with the appellees, the Federal Circuit did make a point to reject the appellees’ argument that the appearance of the phrase “using an automated shipping machine” in the preamble raises a presumption that every step of the claimed method must be performed by a machine. The Court stated that the plain meaning of the phrase does not clarify whether the machine must be used in one, several or all of the steps of the method.
