October 22, 2019

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Federal Circuit Reiterates That Patent Prosecution Disclaimers Must Be “Clear and Unmistakable”

On March 3, 2017, the United States Court of Appeals for the Federal Circuit reaffirmed, in a precedential opinion, that prosecution disclaimers may only limit the scope of a claim where the disclaimer is “both clear and unmistakable to one of ordinary skill in the art.” In Technology Properties Ltd. v. Huawei Technologies Co., Ltd., the Federal Circuit made clear that statements made during patent prosecution will not constitute a disclaimer of claim scope where the statements are “ambiguous or amenable to multiple reasonable interpretations,” but that a disclaimer based on unambiguous statements during prosecution may serve to surrender more claim scope than was necessary to overcome a rejection.

The appellant, Technology Properties Limited, asserted U.S. Patent No. 5,809,336 (the “‘336 patent”) in five related actions in the U.S. District Court for the Northern District of California. Representative claim 6 of the ‘336 patent, construction of which was the subject of appeal, claimed a microprocessor system with two independent clocks: an oscillating (i.e., variable) frequency system clock disposed upon the CPU’s integrated circuit substrate, and an external fixed speed clock connected to an input/output interface. In particular, claim 6 required “an entire oscillator disposed upon said integrated circuit substrate.”  The district court construed this term to mean, “an oscillator . . . that does not require a control signal and whose frequency is not fixed by any external crystal,” in view of a prosecution disclaimer made to overcome the Examiner’s rejections over two prior art patents.

On appeal, the Federal Circuit panel reviewed the district court’s application of separate prosecution disclaimers based on arguments made to the U.S. Patent and Trademark Office during prosecution to overcome separate obviousness rejections based on two prior art patents. The Federal Circuit affirmed one rejection while reversing the other.

The Federal Circuit agreed that the patentee disclaimed any reliance on external crystals for oscillation by consistently arguing that the ‘336 patent’s entire oscillator was novel because “it oscillates without external components” as required by the prior art.   The Federal Circuit affirmed the district court’s application of this disclaimer despite Technology Properties’ presentation on appeal of alternative arguments which “likely” would have overcome the patent examiner’s rejections while sacrificing less patent scope. The panel dismissed these after-arising alternative arguments, noting that “we hold patentees to the actual arguments made, not the arguments that could have been made.”

As to the district court’s finding of a second prosecution disclaimer, the Federal Circuit reversed, holding that the district court applied a narrower construction than the one advanced by the patentees during prosecution. Specifically, the panel held that the district court erred by excessively limiting an “entire oscillator” to one “that does not require a control signal.”  In reaching this conclusion, the Federal Circuit reasoned that the patentee distinguished the reference requiring “a command input … to change the clock speed.”  Thus holding that an entire oscillator “does not require a command input to change the clock frequency,” the court reversed and remanded. (Emphasis added.) While the court’s decision indicated that this modification might not change the outcome of the dispute at hand (the parties stipulated to non-infringement based on the prior construction), the court found it necessary to conduct the analysis under the law of claim construction.

The decision illustrates that the Federal Circuit will not allow a disclaimer to restrict the scope of patent claims beyond what the patentee actually — and unambiguously — disclaimed.  In doing so, the panel opinion reaffirmed that a surrender of claim scope in prosecution must be “clear and unmistakable to one of ordinary skill in the art” before such statements would effect a claim limitation in subsequent litigation.

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About this Author

Adam Samansky, Mintz Levin Law Firm, Boston, Patent Litigation Attorney

Adam’s practice focuses on intellectual property litigation. He handles patent, trademark, and trade secret matters on behalf of innovators and investors in a range of industries. His core practice includes patent and trade secret litigation involving complex technologies in the pharmaceutical, medical, high-tech, and defense industries. Adam has tried cases before multiple US District Courts, briefed and argued cases before the US Court of Appeals for the Federal Circuit, and has briefed bet-the-company issues before the US Supreme Court.

Peter J. Cuomo, Mintz Levin, Patent Litigation Lawyer, Expert Discovery Attorney,Patent Litigation IPRs & Other Post-Grant Proceedings Federal Circuit Appeals Hatch-Waxman ,ANDA Litigation Federal District Court
Of Counsel

Peter’s practice involves intellectual property enforcement and defense, and client counseling on issues related to IP rights. Peter's primary focus is in patent litigation where he has experience in every phase from pre-suit investigations through appeal, including, initial evaluation and case initiation, fact and expert discovery, pre-and post-trial motion practice, and trials and appeals. In addition to suits centered on the assertion and defense of infringement claims, Peter has experience with the successful resolution of multiple inventorship disputes and related misappropriation claims.

Peter has represented clients across a wide range of technologies such as biotechnology inventions, automotive parts, medical and mechanical devices, consumer products. He has also worked on numerous high-stakes Hatch-Waxman litigations for major pharmaceutical companies through trial and appeals. In addition to patent litigation, Peter has experience in disputes involving breach of contracts, unfair competition, trademarks and trade secret misappropriation claims.

Peter is a registered patent attorney licensed to practice and argue before the United States Patent and Trademark Office. In addition to representing clients in US District Courts and the US Court of Appeals for the Federal Circuit, he has experience in multiple post-grant proceedings before the Patent Trial and Appeal Board and its predecessor. He also provides patent and product analyses, and evaluations of prior art related to infringement and invalidity opinions.

Prior to joining the firm, he practiced in the intellectual property litigation practice in the Boston office of another international law firm. Peter also previously worked in and supervised an academic laboratory focused on researching infectious diseases. He is a co-author on multiple scientific papers and spent time in Zambia investigating the co-infection of measles and HIV. During law school, Peter was an editor on the Boston University Journal of Science and Technology Law and worked as a research assistant in intellectual property and the Health Law Department.

Joseph D. Rutkowski, Mintz Levin, Civil Litigation Matters Lawyer, Intellectual Property Litigation Matters

Joseph’s practice focuses on a variety of civil litigation matters, including patent litigation, trade secret disputes, and complex commercial litigation. Joseph’s primary focus is intellectual property litigation, and he is experienced in many aspects, including expert discovery and pretrial motion practice.

In addition, Joseph gained valuable experience representing a homeless shelter, pro bono, as lead attorney in over a dozen housing court matters, including summary process jury trial and mediations, and he supervised junior associates on...