Clear and Unmistakeable Disavowal Found in an IDS

In Golden Bridge Tech v. Apple, [2013-1496] (Fed. Cir. 2014), the Federal Circuit affirmed the district court’s grant of summary judgment that Apple does not infringe the asserted claims of U.S.Patent Nos. 6,574,267 and 7,359,427.

The Federal Circuit concluded that the patent owners submissions during prosecution of its stipulated construction for the term preamble constituted a disclaimer. The Federal Circuit said that while it generally construes terms according to their plain and ordinary meanings to one of ordinary skill in the art, it departs from that meaning where there is disclaimer.  As parts of an Information Disclosure Statement filed in a reexamination and in patent application, the patent owner submitted a stipulation from prior a litigation as to the meaning of the claim term “preface.”

The patent owner argued that the mere submission of an IDS did not work a disclaimer, by the Federal Circuit disagreed, noting that the patent owner submitted the information with a request that the PTO “expressly consider” it.

TIPAn Information Disclosure Statement should perhaps include a statement that the submission of the information does not effect any express or implied disclaimer.  It may also be a good practice of included a statement in all continuations and divisionals rescinding express or implied disclaimer made in any parent or related application.


Any [Tangible] Thing Under the Sun Made by Man

In Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., [2013-1600](Fed. Cir. 2014), the Federal Circuit held that to qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means.  The Federal Circuit affirmed the district court’s determination that a device profile (essentially a data set] for describing properties of a device was not patentable subject matter under 35 U.S.C. §101, saying “[d]ata in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.”

Clear and Unmistakable Disavowal Incorporated by Reference

In X2Y Attenuators, LLC v. ITC,  2013-1340 (Fed. Cir. 2014), the Federal Circuit affirmed the ITC’s construction of U.S. Patent Nos. 7,609,500, 7,916,444, and 8,023,241. Intel argued that the claims should be limited to a sandwich configuration, while X2Y contended that the electrode terms require no construction and should be given their plain and ordinary meanings, and the ITX agreed with Intel.  The Federal Circuit agreed that the “exacting” standard of disavowall was:

The patents’ statements that the presence of a common conductive pathway electrode positioned between paired electromagnetically opposite conductors is “universal to all the embodiments” and is “an essential element among all embodiments or connotations of the invention” constitute clear and unmistakable disavowal of claim scope.

Labeling an element of embodiment “essential” has been found to be a disavowal, and further labelling it “universal to all embodiments” reinforced the conclusion.

One of the patents contained the “essential” disavowal, and the other patents incorporated the “essential” disavowal by reference.  All of the patents incorporated the “universal” disavowal.  The Federal Circuit said that the incorporated patents are “effectively part of the host patents as if they were explicitly contained therein.”  The Federal Circuit conceded that it was possible that a clear and unmistakable disavowal in an incorporated patent is no longer so when placed in the context of the disclosure of the host patent, but that was not the case with the patents in suit.

The lesson of this case is to be careful what its described as “essential” or “universal,” both in the current specification, and in anything incorporated by reference