Heuft: CAFC rules on infectious prosecution disclaimers

In Heuft v. Industrial Dynamics, the CAFC got into prosecution disclaimer issues, citing Elbex Video and Omega.

Prosecution disclaimer occurs when a patentee, either through argument or
amendment, surrenders claim scope during the course of prosecution. Elbex Video,
Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). Amendments
or arguments that are merely vague, ambiguous, or subject to other reasonable
interpretation are not sufficient to surrender claim scope. Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003). Rather, in order for prosecution disclaimer
to attach, the patentee’s actions must be “clear and unmistakable.” Id. at 1326.

Here, disclaiming arguments made in the prosecution of the '408 patent infected the claims of the '974 patent.
The '974 is a divisional of the ’408 patent.

The CAFC noted that disclaimer could arise from statements made in PRIOR applications:

It is well-settled that “prosecution disclaimer may arise from disavowals made
during the prosecution of ancestor patent applications.” Ormco Corp. v. Align Tech.,
Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (quoting Omega Eng’g, Inc. v. Raytek Corp.,
334 F.3d 1314, 1333 (Fed. Cir. 2003)).

The CAFC cited no caselaw to support the decision of this fact pattern.

See also
http://ipbiz.blogspot.com/2004/09/appeal-of-gemstar-itc-case-decided-by.html