Disclaimer Can Result From Disavowals Made During the Prosecution of Ancestor Patent Applications

Heuft Systemtechnik GMBH, v. Industrial Dynamics Co., LTD, [2007-1417, -1462] (June 25, 2008) [LINN, Michel, Newman] NON-PRECEDENTIAL The Federal Circuit reversed the district court’s denial of Industrial Dynamics motion for judgment as a matter of law of non-infringement, finding error in the district court’s claim construction.
BRIEF: At issue were the meanings of the terms for “arranging” in claim 1 and “stabilizing means” in claim 6 of U.S. Patent No. 6,298,974 directed to a “method and apparatus for inspecting rotating containers.” LOF: Infringement, either literal or under the doctrine of equivalents, is a question of fact.
Prosecution disclaimer occurs when a patentee, either through argument or amendment, surrenders claim scope during the course of prosecution. Amendments or arguments that are merely vague, ambiguous, or subject to other reasonable interpretation are not sufficient to surrender claim scope. In order for prosecution disclaimer to attach, the patentee’s actions must be “clear and unmistakable.” The Federal Circuit found that the applicant had clearly disclaimed subject matter in the parent, and turned to the question of disclaimer in the ‘974 patent in suit. It is well-settled that “prosecution disclaimer may arise from disavowals made during the prosecution of ancestor patent applications.” The Federal Circuit said that when the application of prosecution disclaimer involves statements from prosecution of a familial patent relating to the same subject matter as the claim language at issue in the patent being construed, those statements in the familial application are relevant in construing the claims at issue. The Federal Circuit found that the disclaimer in the parent did apply to the language in the claims at issue.