Prosecution History of Parent Affects the Child

Adrain v. TTS, Inc., [2006-1376](January 25, 2007)[MICHEL, Dyk, Prost] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of non-infringement of two claims directed to “an improvement in a vehicle”, and invalidity of a third claim.
SIGNIFICANCE: Prosecution of parent application is used to contrue the claims in a patent.
BRIEF: The Federal Circuit agreed with the district court’s interpretation of the “in a vehicle” language in the preamble as requiring that the accused apparatus for modifying an engine control module remain part of the vehicle once attached. The Federal Circuit relied upon the prosecution history of a parent application, saying “The prosecution history of an earlier patent in the same family ‘applies with equal force to subsequently issued patents that contain the same claim limitation.’ Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999).” The Federal Circuit noted that in the parent application applicant amended the preamble from “an improvement in an apparatus” to “an improvement in a vehicle”, and concluded that the amended preamble requires a module that becomes part of the vehicle and is intended to remain part of the vehicle during use. The Federal Circuit thus affirmed the judgment of non-infringement. The Federal Circuit also affirmed summary judgment of invalidity, finding that while the prior art “preferably” operated in a different manner than the claimed invention, the reference disclosed the claimed method.