Monday, May 18, 2020

SANDBOX LOGISTICS loses appeal at CAFC over the meaning of "bottom"

Of acquiescence as disclaimer:

As the Examiner explained, he “considered [the bottom wall] essential because the specification does not describe a means to connect the hatch to
the container without the bottom wall.” J.A. 1007. Sandbox did not challenge the Examiner’s understanding; instead, in response, SandBox amended the claims of the ’518
patent to recite a “bottom[,]” J.A. 575, with SandBox explaining that although the claims “were rejected on the basis [that] they lack essential elements[,]” the claims were
“being amended to include a bottom, and that the hatch is
positioned closely adjacent to the bottom[,]” J.A. 580. The
Examiner allowed the ’518 patent, based at least in part on
his understanding that the claims of the ’518 patent were
amended to include a “bottom wall on which the hatch is
mounted.” J.A. 1007; see J.A. 1025 (Notice of Allowability)
(the Examiner explaining that the prior art “fails to teach
or suggest . . . a bottom[] and a hatch closely adjacent to the
bottom”). SandBox’s failure to challenge the Examiner’s
understanding amounts to a disclaimer. See Biogen Idec,
Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1096 (Fed.
Cir. 2013) (“If an applicant chooses, she can challenge an
examiner’s characterization in order to avoid any chance
for disclaimer, but the applicants in this case did not directly challenge the examiner’s characterization.”); TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330
(Fed. Cir. 2003) (“[I]n ascertaining the scope of an issued
patent, the public is entitled to equate an inventor’s acquiescence to the examiner’s narrow view of patentable subject matter with abandonment of the rest. Such
acquiescence may be found where the patentee narrows his
or her claims by amendment[.]” (internal citation omitted)).
Thus, the prosecution history confirms that “bottom” refers
to a “bottom wall.” Accordingly, the District Court properly
construed the term “bottom” as recited in the ’518, ’626, and
’929 patents.1


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