DISCLAIMER ONLY APPLIES WHERE THE EXACT SAME LANGUAGE IS USED

Lexion Medical, LLC, v. Northgate Technologies, Inc., [2007-1420, -1440] (August 28, 2008) [SCHALL, Michel, Rader] The Federal Circuit affirm-in-part, vacate-in-part, and remanded that Claims 11 and 12 of U.S. Patent No. 5,411,474 are valid and were infringed by Northgate, and that the asserted claims of U.S. Patent No. 6,068,609 are invalid for obviousness.
DISCUSSION: Regarding the ‘474, the Federal Circuit held that prosecution disclaimer did not apply, noting that the alleged disclaimer corresponded precisely with the limitations expressly recited in those particular claims, and was clearly in response to a rejection of those particular claims, any disclaimer must accordingly be limited to those claims, under our approach set forth in Golight. The parties disputed whether predetermined temperature in claim 11(e) covered a range or a single temperature. The Federal Circuit noted that the word “range” appears elsewhere in the language of claim 11 but is not used in limitation 11(e) to describe the “predetermined temperature” suggests that the applicants affirmatively employed the word “range” where that meaning was intended, but specifically declined to do so in connection with the “predetermined temperature” limitation of claim 11(e). As a result the Federal Circuit vacated and remanded the issue of infringement of the ‘474 patent.