Federal Circuit: Disclaimer based on arguments actually made, not those that could have been made

Tech. Props. v. Huawei Techs. Co., Nos. 2016-1306, 2016-1307, 2016-1309, 2016-1310, 2016-1311, 2017 U.S. App. LEXIS 3824 (Fed. Cir. Mar. 3, 2017)(Before Moore, Wallach, and Chen, J.)(Opinion for the court, Moore, J.)

In a consolidated patent infringement case, the Northern District of California construed the asserted patent to have disclaimed scope during prosecution. The parties stipulated to non-infringement based on that construction and appealed to the Federal Circuit. The Federal Circuit vacated and remanded because the claim construction was partly incorrect.

At issue was the district court’s construction of “an entire oscillator disposed upon said integrated circuit substrate.” The lower court construed the claim to require “an oscillator located entirely on the same semiconductor substrate as the central processing unit that does not require a control signal and whose frequency is not fixed by any external crystal,” where the italicized portion represents the disclaimed scope. The parties disputed that construction.

The Federal Circuit examined the prosecution history and broke its analysis into two parts: the disclaimer based on the first reference (“whose frequency is not fixed by any external crystal”); and the disclaimer based on the second reference (“that does not require a control signal”). The first reference required a narrower disclaimer than that which was actually disclaimed. The Federal Circuit, however, explained that the scope of surrender is not limited to what is necessary to overcome the prior art reference. Instead, patentees may surrender more than is required to overcome the prior art. “When this happens, we hold patentees to the actual arguments made,” Judge Moore wrote, “not the arguments that could have been made.” Thus, the question is what a person of ordinary skill in the art would understand to have been disclaimed based on the argument actually made, not what one of ordinary skill in the art would have thought was necessary to disclaim the prior art identified. Ultimately, because of the breadth of the disclaimer, the Federal Circuit affirmed the district court’s construction relative to the first disclaimer.

The second disclaimer, however, was determined to be incorrect because it was overbroad. The applicant’s arguments did not disclaim “any” signal, but rather disclaimed only a particular signal. The Court explained: “None of these statements disclaim an entire oscillator receiving a command input for any purpose.” The Court offered its own construction for the second reference, finding that an “entire oscillator… does not require a command input to change the clock frequency.”

Seemingly unconvinced that the slight difference in claim interpretation would matter, the Federal Circuit still decided to vacate the district court decision and remand for further proceedings. The Federal Circuit explained:

We hold that “an entire oscillator disposed upon said integrated circuit substrate” is “an oscillator located entirely on the same semiconductor substrate as the central processing unit that does not require a command input to change the clock frequency and whose frequency is not fixed by any external crystal.” Although this minor modification to the district court’s construction likely does not affect the outcome in this case, because the parties stipulated to non-infringement under the district court’s construction, the proper course of action is for us to vacate and remand. We vacate the district court’s construction and remand for further proceedings.

This case serves to reinforce a well-known axiom: patent applicants must carefully construct their arguments during prosecution to limit disclaimers of claim scope. A patentee disclaims according to “the actual arguments made, not the arguments that could have been made.”

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