{"id":1452,"date":"2017-03-03T12:05:33","date_gmt":"2017-03-03T17:05:33","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1452"},"modified":"2017-03-04T14:23:02","modified_gmt":"2017-03-04T19:23:02","slug":"disavowal-is-not-limited-to-what-is-necessary-a-patentee-may-give-up-more-than-necessary","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1452","title":{"rendered":"Disavowal is Not Limited to What is Necessary; A Patentee May Give Up More than Necessary"},"content":{"rendered":"

In Technology Properties Limited LLC v. Huawei Technologies Co., Ltd.,<\/em> [2016-1306, 2016-1307, 2016-1309, 2016-1310, 2016-1311] (March 3, 2017), the Federal Circuit vacated and remanded the case because the\u00a0district court erred in a portion of its construction
\nof \u201centire oscillator\u201d in\u00a0U.S. Patent No. 5,809,336 on\u00a0a microprocessor with two\u00a0independent clocks.<\/p>\n

The claims require “an entire oscillator disposed upon said integrated
\ncircuit substrate and connected to said central processing
\nunit.” \u00a0The district court construed\u00a0the term to mean \u201can oscillator located entirely on\u00a0the same semiconductor substrate as the central processing\u00a0unit that does not require a control signal and\u00a0whose frequency is not fixed by any external crystal<\/em>.\u201d \u00a0Appellee argued that the second part of this construction was required because of disclaimers made during prosecution to overcome Magar, U.S. Patent No. 4,503,500, and Sheets, U.S. Patent No.\u00a04,670,837.<\/p>\n

The Federal Circuit began noting that an applicant\u2019s statements to the PTO characterizing\u00a0its invention may give rise to prosecution disclaimer.\u00a0The Fedeal Circuit said that prosecution disclaimer can
\narise from both claim amendments and arguments made
\nto the PTO, but does\u00a0not apply unless the disclaimer is \u201cboth clear and unmistakable\u00a0to one of ordinary skill in the art. \u00a0When\u00a0determining
\nwhether disclaimer applies, applicant’s statements must be cosnidered in\u00a0the context of the entire prosecution. \u00a0If the\u00a0statements are ambiguous or amenable to\u00a0multiple reasonable interpretations, prosecution disclaimer\u00a0is not<\/strong> established.<\/p>\n

After examining the applicants arguments regarding\u00a0Magar during prosecution, the Federal Circuit agreed\u00a0with the district court\u2019s conclusion that\u00a0the \u201centire oscillator\u201d must be a variable\u00a0frequency oscillator rather than a fixed-frequency crystal. \u00a0The Federal Circuit
\nsaid that the disclaimer may not have\u00a0been necessary, but the statements made to overcome\u00a0Magar were clear and unmistakable.<\/p>\n

The Federal Circuit said that the patent owner presented clear and concise arguments\u00a0about the distinctions between Magar and the
\npatent in its briefing, and add that had those same\u00a0arguments been made to the Patent Office, the construction\u00a0may have been different because the patentee likely\u00a0disclaimed more than was necessary to overcome the\u00a0examiner\u2019s rejection. However, the Federal Circuit admonished:<\/p>\n

the scope of surrender is not\u00a0limited to what is absolutely necessary to avoid a prior art\u00a0reference; patentees may surrender more than necessary.<\/p><\/blockquote>\n

As to disclaimers based upon Sheets, the Federal Circuit found that the district court went too far in limiting an \u201centire oscillator\u201d to one \u201cthat does not\u00a0require a control signal.\u201d The Fedeal Circuit said that this was beyond the arguments made by application that the term is properly\u00a0construed as one \u201cthat does not require a command
\ninput to change the clock frequency.\u201d<\/p>\n

The Federal Circuit indicated that its minor\u00a0modification to the district court\u2019s construction likely does not affect the outcome in this case, because the parties\u00a0stipulated to non-infringement under the district court\u2019s\u00a0construction, the proper course was to vacate.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Technology Properties Limited LLC v. Huawei Technologies Co., Ltd., [2016-1306, 2016-1307, 2016-1309, 2016-1310, 2016-1311] (March 3, 2017), the Federal Circuit vacated and remanded the case because the\u00a0district court erred in a portion of its construction of \u201centire oscillator\u201d in\u00a0U.S. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7,47,1],"tags":[],"class_list":["post-1452","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-disavowal","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1452","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1452"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1452\/revisions"}],"predecessor-version":[{"id":1453,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1452\/revisions\/1453"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1452"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1452"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1452"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}