Posts Tagged: "prosecution history"

Federal Circuit Affirms District Court’s Summary Judgment of NonInfringement Under the Doctrine of Equivalents

On November 22, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the District of Nevada granting summary judgment of noninfringement under the doctrine of equivalents. Pharma Tech Solutions, Inc. (Pharma Tech) sued LifeScan, Inc. (LifeScan) for infringement of U.S. Patent Nos. 6,153,069 (the ‘069 patent) and 6,413,411 (the ‘411 patent). The patents are directed toward home use, blood glucose monitoring systems for individuals with diabetes. Previous monitoring systems determined blood glucose concentration from the Cottrell current drawn and measured from a patient’s oxidized blood sample. The specification of the ‘069 and ‘411 patents claims to improve on these systems by “eliminating several of the critical operator dependent variables that adversely affect the accuracy and reliability” of the previous systems. The invention performs multiple Cottrell current measurements (opposed to just the one) and converts these into analyte concentrations. It then compares the results for better accuracy, notifying the user if the results fall outside of an acceptable range of each other to indicate a system error. Ultimately, the CAFC found that because LifeScan’s meter does not convert diffusion limiting current readings to analyte concentration measurements and then compare the measurements to detect errors, and because Pharma Tech is barred in its infringement argument by prosecution history estoppel, LifeScan did not infringe Pharma Tech’s ‘069 or ‘411 patents.

Nancy Braman

November 29, 2019

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

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… 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.

Joseph Robinson & Robert Schaffer & Gene Quinn

March 10, 2017

Disclaimers of Claim Scope Viewed in Context of the Entire Prosecution History

The Federal Circuit agreed with the district court that this evidence did not demonstrate a “clear and unmistakable” disclaimer in claim scope. The Court emphasized that disavowals must be evaluated in the context of the entire prosecution history. Thus, the term “cells derived from a vascularized tissue” included both parenchymal (organ) and non-parenchymal cells. The file history statements did not amount to an unmistakable disclaimer of non-parenchymal cells, in light of the full prosecution history and the claim language pending at the time of the alleged disavowal.

Joseph Robinson & Robert Schaffer

October 21, 2016

Federal Circuit Reiterates High Standard for Prosecution History Disclaimer

In a January 29, 2016 decision, the Federal Circuit vacated a jury judgment of non-infringement and ordered the District of Delaware to conduct a new trial where construction of a claim term based on prosecution history disclaimer was found to be too narrow. In rejecting the district court’s construction as too limiting, the Court emphasized the high standard for finding prosecution history disclaimer of claim scope. Examining the two prosecution history passages said to be a disclaimer, the Court found that each was readily susceptible to a narrower reading than the one needed to support the district court’s conclusion.

Robert Schaffer & Joseph Robinson

February 12, 2016