A Patentee is Held to What He Declares During Prosecution of His Application

Gillespie v. DYWIDAG Systems International, USA, [2006-1382](September 6, 2007)[NEWMAN, Schall, Bryson] The Federal Circuit reversed the judgment of infringement of U.S. Patent No. 5,259,703, modifying the claim construction, and concluding under the modified construction, that literal infringement cannot be found.
SIGNIFICANCE: A patentee is held to what he declares during the prosecution of the application, even it it is not why the application is allowed.
BRIEF: The claim language at issue was directed to a collar "having an outer surface defining a drive head that accepts a driving mechanism for rotating and linearly translating said bolt". The patentee argued that the outside surface was shaped in order to distinguish over the prior art. However, the patentee was arguing that the claims should not be so limited because according to the reasons for allowance, that is not why the claims were allowed. The Federal Circuit found that the plain meaning of the terms supported the narrower construction, and further that this was the meaning that the patentee used when he argued the difference from the prior art. "The patentee is held to what he declares during the prosecution of his patent." Accordingly, the judgment of infringement was reversed.