Wednesday, August 04, 2010

Marctec: prosecution history estoppel

from the case:

Limitations clearly adopted by the applicant during
prosecution are not subject to negation during litigation, on
the argument that the limitations were not really needed in
order to overcome the reference. When an applicant yields
claim scope in order to secure allowance of the patent, the
public notice aspect of the record inhibits later retrench-
ment to recover what was yielded. See Norian Corp. v.
Stryker Corp., 432 F.3d 1356, 1361-62 (Fed. Cir. 2005) (“[I]t
frequently happens that patentees surrender more through
amendment than may have been absolutely necessary to
avoid particular prior art. In such cases, we have held the
patentees to the scope of what they ultimately claim, and we
have not allowed them to assert that claims should be
interpreted as if they had surrendered only what they had
to.”). Prosecution history estoppel thus prevents MarcTec
from recovering claim scope that includes bonding without
the application of heat.


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