Posts Tagged: disclaimer


Prosecution and Litigation Implications of Subsequent Patent Applications (Part IV)

In Part I of this series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part …
By Gary Maze & Jeffrey Wendt
7 months ago 2

Prosecution Disclaimer 101: Argument relied upon by examiner results in 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 "…
By Gene Quinn
3 years ago 2

Disclaimer Before Institution of IPR Results In Adverse Judgment And Estoppel

A disclaimer of challenged patent claims before an IPR is instituted may result in a final adverse judgment against the patent owner, triggering estoppel provisions that preclude …

Statements Made by Patent Owner During IPR Can Support Finding of Prosecution Disclaimer

In the case of Aylus Networks, Inc. v. Apple Inc., the Federal Circuit affirmed the district court’s finding of summary judgment for Apple Inc. (“Apple”). The …

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 …

Form Over Substance: CAFC Kills Patent Due to Paralegal Mistake

Every once in a while you stumble across a situation where what is fair seems obvious. At those moments we are all too frequently reminded that we …
By Gene Quinn
7 years ago 6