September 27, 2022

Volume XII, Number 270


September 26, 2022

Subscribe to Latest Legal News and Analysis

Statements Made in Litigation Can Support Prosecution History Estoppel

In Speedtrack, Inc. v., Inc., Nos. 2020-1573, 2020-1660 (Fed. Cir. June 3, 2021), the Federal Circuit affirmed the District Court for the Northern District of California’s final judgment of noninfringement based on claim construction.

Speedtrack’s patent, U.S. Patent No. 5,544,360, is directed to a method of organizing computer files. The user assigns each file one or more category description, which is later used to locate the file. For example, a recipe file can be assigned “French,” “Bread,” and “Recipes,” whereas the pertinent prior art, U.S. Patent No. 5,047,918 (“Schwartz”), has a hierarchical structure requiring an “attribute” such as “recipes” and a “value” such as “bread.”

The Federal Circuit affirmed the district court’s finding that the patentee disclaimed the use of hierarchical structures within its category descriptions. During the prosecution, Speedtrack argued that Schwartz’s hierarchical structure “fell outside the scope of the amended claims” and narrowed the claims by adding the limitation “the category descriptions having no predefined hierarchical relationships….” During the litigation, Speedtrack argued that the claim was amended to distinguish from Schwartz. The Federal Circuit held that these statements are sufficient to find a clear and unmistakable disclaimer of the claim scope.

© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 166

About this Author

Christina Ji-Hye Yang Patent Litigation Attorney Finnegan Law Firm Washington, DC

Christina Ji-Hye Yang focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases.

Christina is involved in all phases of litigation, including pre-litigation analysis, fact discovery, and expert discovery. She also has experience in Section 337 litigation at the International Trade Commission (ITC) and post-grant proceedings at the Patent Trials and Appeals Board (PTAB), including inter partes reviews (IPRs). Christina has also advised clients in...

Elizabeth Ferrill Patent Attorney Finnegan Law Firm

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445