News & Analysis as of

Disclaimers Prior Art

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

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

Fenwick & West LLP

Rescinding a Specification Disclaimer Introduces New Matter

Fenwick & West LLP on

A recent case before the U.S. Court of Appeals for the Federal Circuit serves as an important reminder of the distinction between a disclaimer introduced in the specification of a patent and a disclaimer introduced during...more

Akin Gump Strauss Hauer & Feld LLP

Eastern District of Texas Judge Holds that Statements Made to PTAB Constitute Disclaimer

On September 9, 2017, an Eastern District of Texas magistrate judge issued a report and recommendation holding that a plaintiff was estopped from asserting its patent infringement claims because statements made in response to...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

BakerHostetler

Patent Watch: Saffran v. Johnson & Johnson

BakerHostetler on

On April 4, 2013, in Saffran v. Johnson & Johnson, the U.S. Court of Appeals for the Federal Circuit (Lourie,* Moore, O'Malley) reversed the district court's judgment that Johnson & Johnson and Cordis Corp. infringed U.S....more

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