News & Analysis as of

Disclaimers Claim Construction

BCLP

Federal Circuit Clarifies Limits of Prosecution Disclaimer in Patent Families

BCLP on

In Maquet Cardiovascular LLC v. Abiomed Inc., 131 F.4th 1330 (Fed. Cir. 2025), the Federal Circuit addressed whether the prosecution history of one patent in a patent family can limit the scope of claims in a different patent...more

DLA Piper

What is a “Clear and Unmistakable” Prosecution History Disclaimer?

DLA Piper on

The Federal Circuit’s March 21, 2025 decision in Maquet Cardiovascular LLC v. Abiomed Inc. et al. (No. 2023-2045) and the recent Patent Trial and Appeal Board (PTAB) Delegated Rehearing Panel decision in SynAffix B.V. v....more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Statements Made During Prosecution of Parent Application Disavow Claim Scope in Subsequent Patents

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that...more

McDermott Will & Emery

Prosecution Disclaimer Alive and Well, Especially in Closed Claim

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a district court’s noninfringement determination, finding that the presence of a disclaimed compound in the accused product precluded infringement. Azurity Pharm., Inc....more

McDermott Will & Emery

Espresso Yourself: When Prosecution History as a Whole Doesn’t Demonstrate Clear, Unmistakable Disclaimer

The US Court of Appeals for the Federal Circuit reversed and remanded a district court’s claim construction and related summary judgment rulings after determining that the district court erred in construing a claim term by...more

Haug Partners LLP

Narrowing the Disclaimer Doctrine: Federal Circuit Cabins the Reach of Disclaimers in the IPR Context

Haug Partners LLP on

OVERVIEW - The United States Court of Appeals for the Federal Circuit recently affirmed three Inter Partes Review (IPR) final written decisions of the U.S. Patent Trial and Appeal Board (“the Board”) where the Board...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2022

INVT SPE LLC v. Int’l Trade Comm’n, Appeal No. 2020-1903 (Fed. Cir. Aug. 31, 2022) - In its only precedential patent case last week, the Federal Circuit issued a lengthy opinion that revolved around claims that are drawn...more

Knobbe Martens

Sounding Off: Prosecution Disclaimer Requires Unambiguous Intrinsic Evidence

Knobbe Martens on

GENUINE ENABLING TECHNOLOGY LLC V. NINTENDO CO., LTD - Before Newman, Reyna, and Stoll. Appeal from the Western District of Washington. Summary: A finding of prosecution disclaimer must be supported by an unambiguous...more

Knobbe Martens

Federal Circuit Review - May 2018

Knobbe Martens on

Priority Claims Cannot Be Incorporated by Reference - In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, Appeal Nos. 2016-2707 and 2016-2708, the Federal Circuit held that when a patent for a...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Core Wireless v. LG affirms the denial of summary judgment as to unpatentable subject matter, ruling that the asserted claims are directed to an improved user interface for computing devices, not to the abstract idea of an...more

Latham & Watkins LLP

Patent Owner Statements During IPR May Limit Claim Scope

Latham & Watkins LLP on

Federal Circuit holds that patent owner’s statements can trigger prosecution disclaimers. On May 11, 2017 in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit addressed for the first time whether statements made...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - June 2017

Escaping PTAB Review Through Strategic Disclaimer in CBM Proceedings - A patent is only eligible for covered business method (CBM) review if it: (1) claims a method or apparatus for performing data processing or other...more

Knobbe Martens

Federal Circuit Review | April 2017

Knobbe Martens on

Patentee’s Unnecessarily Broad Prosecution Disclaimer Affirmed by Federal Circuit - In Technology Properties Limited LLC v. Huawei Technologies Co., Ltd., Appeal Nos. 2016-1306, -1307, -1309, -1310, -1311, the Federal...more

McDermott Will & Emery

Repeated Disparagement of the Prior Art in the Specification Can Operate as a Clear and Unmistakable Disavowal of Claim Scope -...

McDermott Will & Emery on

Addressing issues of claim construction, the United States Court of Appeals for the Federal Circuit affirmed the district court’s narrow construction based on a disclaimer in the specification. Openwave Systems, Inc., NKA...more

McDonnell Boehnen Hulbert & Berghoff LLP

Avid Technology, Inc. v. Harmonic, Inc. (Fed. Cir. 2016) - Lesson for Defendant-Appellee's: Provide Responsive Arguments on Appeal

On January 29, 2016, the Federal Circuit issued an Opinion in Avid Technology, Inc. v. Harmonic, Inc. in which the judgment of the District Court was vacated, and the case was remanded for a new trial on infringement. Avid...more

Nutter McClennen & Fish LLP

Federal Circuit Affirms High Standard to Find Patentee Disclaimer

In a decision likely to be lauded by patent applicants and owners, the Federal Circuit recently issued an opinion that affirms its staunch position that the bar to prove a patent owner made a disclaimer that impacts the claim...more

16 Results
 / 
View per page
Page: of 1

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide