Wednesday, June 25, 2008

Disclaimer From Familial Patent Nullifies Infringement

Heuft Systemtechnik GMBH v. Industrial Dynamics Co. (07-1417) June 25, 2008 (noprecedential)

Industrial Dynamics Co. (IDC) appealed a district court claim construction which led to a finding of infringment. The patent-in-suit was a divisional application directed to a "method and apparatus for inspecting rotating container," having a thin prosecution history. The parent application, however, contained numerous amendments and arguments regarding the prior art.

IDC argued that the claimed feature of "stably arranging containers" did not include devices having exit angles less than 30 degrees due to prosecution disclaimer in the parent application. Heuft countered that the prosecution history was silent as to the measure of the exit angles, and that any disclaimer that may have arisen in the parent application did not apply to the claims of the patent-in-suit.

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.
After reviewing the prosecution history, the CAFC decided that the parent application disclaimed angles less that 30°:

We agree with IDC that in the ’408 patent [the parent], Heuft disclaimed "arranging . . . containers . . . stable" or "means for the stable arrangement of . . . containers" using angles less than 30°. This is because its actions during prosecution were clear and unmistakable.

* * *

[T]hroughout the course of prosecution of the ’408 patent, Heuft not only repeatedly distinguished its claims over the [prior art] on the basis of the large exit angle’s ability to stably arrange the containers, it also amended all of those claims to require an exit angle between 30° to 100°, a span which directly tracks the only discussion in the specification indicating an appropriate range for stably arranging containers. Under these circumstances, we have little difficultly concluding that Heuft clearly and unmistakably disclaimed exit angles less than 30°, at least with respect to the ’408 patent.

With regard to the disclaimer "flowing" from the parent to the divisional,

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)). "When the application of prosecution disclaimer involves statements from prosecution of a familial patent relating to the same subject matter as the claim language at issue in the patent being construed, those statements in the familial application are relevant in construing the claims at issue." Id.

[T]he statements Heuft made during prosecution of the ’408 patent related to the same subject matter that is at issue in the relevant claim limitations of the ’974 patent—namely, "arranging . . . containers . . . stable" and "means for the stable arrangement of . . . containers." Consequently, the arguments and amendments Heuft made during prosecution of the ’408 patent also operate to disclaim exit angles less than 30° in the claims of the ’974 patent.

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