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Patent Litigation Claim Construction Prosecution History Estoppel

Morgan Lewis

Federal Circuit Applies Prosecution History Estoppel Based on Claim Cancellation

Morgan Lewis on

The US Court of Appeals for the Federal Circuit recently held that cancellation of a claim during prosecution may give rise to prosecution history estoppel, precluding the patentee from recapturing the surrendered subject...more

Sheppard Mullin Richter & Hampton LLP

The Push and Pull of Prosecution Estoppel: How Cancelled Claims Can Affect the Scope of Non-Amended Claims

Prosecution history estoppel may narrow the scope of a claim that was unamended during prosecution, if another closely related claim is amended or cancelled during prosecution....more

Womble Bond Dickinson

Reminder: “Consisting essentially of” Is U.S. Patent Claim Language Needing Interpretation

Womble Bond Dickinson on

On June 30, 2025, the Federal Circuit issued a precedential opinion in Eye Therapies v. Slayback Pharma in which the court interpreted the transition phrase “consisting essentially of” to be a closed term excluding other...more

Knobbe Martens

Cancellation of a Closely Related Claim During Prosecution Can Trigger Prosecution History Estoppel

Knobbe Martens on

COLIBRI HEART VALVE LLC v. MEDTRONIC COREVALVE, LLC - Before Taranto, Hughes, and Stoll. Appeal from the United States District Court for the Central District of California. The Federal Circuit reversed a $106 million...more

Knobbe Martens

Not So Cozy: Prosecution History Disclaimer for Design Patents

Knobbe Martens on

TOP BRAND LLC v. COZY COMFORT CO. LLC - Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the District of Arizona. Summary: Arguments presented during prosecution of a design-patent application...more

Lathrop GPM

Federal Circuit Says Claim Cancellation Can Create Prosecution History Estoppel

Lathrop GPM on

In a July 18 precedential decision in Colibri Heart Valve LLC v. Medtronic CoreValve LLC, the U.S. Court of Appeals for the Federal Circuit overturned a $106 million jury verdict against Medtronic for infringement of a patent...more

McDermott Will & Schulte

Don’t get too comfy: Prosecution disclaimer also applies to design patents

Concluding that the principles of prosecution history disclaimer apply to design patents, the US Court of Appeals for the Federal Circuit reversed a district court’s denial of judgment as a matter of law and entry of a jury...more

Proskauer - The Patent Playbook

Eyes Open to the Past: Federal Circuit Holds Prosecution History Is Claim Construction Evidence

The Federal Circuit’s decision in Eye Therapies, LLC v. Slayback Pharma, LLC provides further insight into the tools available for patent claim construction. The Federal Circuit had previously held that a patent’s...more

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

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 & Schulte

The Clear and Unmistakable Standard for Applying Prosecution Disclaimer

The US Court of Appeals for the Federal Circuit found that a district court misconstrued claim terms based on a misapplication of the clear and unequivocal disavowal standard and vacated its noninfringement decision. Maquet...more

Goodwin

ITC 337 Quarterly Insider Q2 2020

Goodwin on

Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

The Goods on IP - October 2019: Curver Luxembourg v. Home Expressions: Words Can Matter in a Design Patent

Claim construction for a design patent is mainly focused on the drawings, which show the ornamental design that is protected by the patent. But the Federal Circuit recently identified one situation where the drawings weren’t...more

Knobbe Martens

Federal Circuit Review - June 2019

Knobbe Martens on

One-year Clock for Filing IPR Petition Applies to Litigants and Parties that Become Privies of the Litigant Prior to Institution. In Power Integrations, Inc v. Semiconductor Components, Appeal No. 2018-1607, the Federal...more

Foley & Lardner LLP

Prosecution History Informs Claim Meaning Even Without Unmistakable Disclaimer

Foley & Lardner LLP on

Although non-precedential, the Federal Circuit decision in Aptalis Pharmatech, Inc. v. Apotex Inc. is worth a read to see how the court “tiptoes” the “fine line between reading a claim in light of the specification, and...more

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