Prosecution Disclaimer 101: Argument relied upon by examiner results in prosecution disclaimer

Patent Prosecution 101: Applicant arguments relied upon by examiner result in prosecution disclaimerThe Federal Circuit recently issued a decision in Arendi S.A.R.L. v. Google LLC, No. 2017-1238 (Fed. Cir. Feb. 20, 2018), affirming the Patent Trial and Appeal Board (PTAB) decision in an inter partes review. In an opinion authored by Judge Pauline Newman (joined by Judges Bryson and Moore), the Federal Circuit affirmed based on the PTAB’s alternative rationale, finding the claims obvious even if there was an effective prosecution disclaimer.

The case began with Google LLC, Motorola Mobility LLC, and Samsung Electronics Co., Ltd. requesting an inter partes review of all 79 patent claims of U.S. Patent No. 6,323,853 (“the ‘853 patent”).[1] The ‘853 patent is owned by Arendi S.A.R.L. (“Arendi”). The Patent Trial and Appeal Board (“PTAB”) instituted the IPR review on the basis that there was a reasonable likelihood that the claims were invalid as being obvious. At the conclusion of the IPR proceeding, the PTAB held all of the claims unpatentable. Arendi appealed.

Arendi’s ‘853 patent related to a computerized method for identifying and substituting information into an electronic document. Claim 1 was deemed representative because Arendi did not argue patentability of any of the other claims. Recently the Federal Circuit held it is inappropriate for a single claim to be deemed representative if separate arguments are made regarding the patentability of claims independent of the broadest independent claim. See Berheimer v. HP (Feb. 8, 2018); See also In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983) (“Since the claims are not separately argued, they all stand or fall together.”). In Berkheimer Judge Moore explained that a claim is not representative merely because it is the only independent claim. See Patent eligibility a factual determination inappropriate for summary judgment.

Representative claim 1 reads:

1. A computerized method for information handling within a document created using an application program, the document including first information provided therein, the method comprising:

providing a record retrieval program;

providing an input device configured to enter an execute command which initiates a record retrieval from an information source using the record retrieval program;

upon a single entry of the execute command by means of the input device:

analyzing the document to determine if the first information is contained therein, and

if the first information is contained in the document, searching, using the record retrieval program, the information source for second information associated with the first information; and

when the information source includes second information associated with the first information, performing at least one of,

(a) displaying the second information,

(b) inserting the second information in the document, and

(c) completing the first information in the document based on the second information.

During prosecution and after an interview with the patent examiner, in order to differentiate the claimed invention over certain prior art references, amendments were made to the claims. In the Remarks accompanying an amendment, attorneys for Arendi explained why the amendments to the claims were being made. The relevant prior art reference required the user to select text, which Arendi argued was not true for its claimed invention. In relevant part the Remarks make the argument:

[T]he present invention does not require the user to select a text string to be processed since it functions automatically upon a single click of an input device, such as a button, menu item, etc.

Subsequently, the patent examiner found the claims patentable. In the Reasons for Allowance, the patent examiner explained the claimed invention was patentable because:

[T]he present invention does not require the user to select the text string to be processed since it functions automatically upon a single click of an input device to determine if the first information is contained within the document.

At the PTAB proceeding, as well as on appeal to the Federal Circuit, Arendi argued that this amendment constituted a prosecution disclaimer.

The PTAB found the claims in question obvious for two reasons. First, in its primary ruling the PTAB held that there was no prosecution disclaimer, finding the “single entry” limitation of the claims to include text selection by a user, which was clearly within the prior art. The PTAB reasoned that claims these claims were not limited by the prosecution record, but to do this the PTAB had to ignore both the patent examiner’s Reasons for Allowance and the argument explicitly made by the applicant in the Remarks.

Rather inexplicably, citing Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005), the PTAB ruled that it is up to the applicant to disclaim scope, not the examiner. But such a rationale simply ignored the facts on the record, namely that the reason the examiner explained the claims were allowed was precisely because of the argument made in the Remarks. Therefore, it was the applicant that specifically gave up that claim scope, as required to establish a prosecution disclaimer.

This was, of course, the correct ruling by the Federal Circuit. It is well established, black letter law that patent claims must be interpreted in light of the prosecution history, and specifically in light of arguments made by the applicant in order to convince the examiner to issue the patent.

As the Supreme Court explained in Graham v. John Deere, 383 U.S. 1, 33 (1966):

It is, of course, well settled that an invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office. Hogg v. Emerson, 11 How. 587 (1850); Crawford v. Heysinger, 123 U.S. 589 (1887). Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent. Powers-Kennedy Co. v. Concrete Co., 282 U.S. 175, 185-186 (1930); Schriber Co. v. Cleveland Trust Co., 311 U.S. 211, 220-221 (1940).

Regarding the Federal Circuit’s ruling on prosecution disclaimer, Judge Newman explained:

Here the applicant amended the claims and explained what was changed and why, and the examiner confirmed the reasons why the amended claims were deemed allowable. See ACCO Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075, 1078-79 (Fed. Cir. 2003) (stating that the examiner’s Reasons for Allowance made “clear that the examiner and the applicant understood” what was changed and what the invention required). Here too, the examiner’s “Reasons for Allowance” made clear that the examiner and the applicant understood what the applicant had changed, and what the claim amendment required.

On the alternative ruling of the PTAB, which found the claims obvious even if they assumed the presence of prosecution disclaimer, the Federal Circuit agreed. “In sum, the PTAB found that Goodhand shows all of claim 1’s limitations, when giving effect to the prosecution disclaimer and limiting the scope of the ‘single entry’ command,” Judge Newman wrote. “This finding is supported by substantial evidence.”

Thus, the PTAB ignoring what the applicant’s representative argued in the Remarks, and disregarding the examiner’s Reasons for Allowance, wound up being a Pyrrhic victory.



[1] Samsung was not a party in the appeal.


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Join the Discussion

2 comments so far.

  • [Avatar for Patent Investor]
    Patent Investor
    March 2, 2018 07:29 pm


    Is patent owner disclaimer during inter partes reexams and reviews supposed to be given the same weight as disclaimer made during initial prosecution In VirnetX’s struggle versus Apple the disclaimer was used by Apple to force their preferred claim construction, but when it got to the PTAB Apple reversed course and distanced itself from the disclaimer. Of course the PTAB agreed with Apple.

  • [Avatar for Pro Se]
    Pro Se
    March 2, 2018 04:25 pm

    PTAB Judges are pools of imported top law firm counsel, it’s clearly a silent pact to enforce firm client interests from the inside.

    PTAB will continue to create any and all reasons to protect that interest.. America has to be the only place in all of earth where the government is allowed to operate in such a anti-citizen matter.

    If the PTAB happened in Europe, they’d be riots at the patent office.

    I never seen anything as unfair, biased, and economically destructive as the AIA and PTAB.

    My mistake, I did hear of one equally charged, Nazi Germany.