717 Madison Place

To invoke argument-based estoppel, the prosecution history must evince a “clear and unmistakable surrender of subject matter.”

Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d 1373, 1377 (Fed.Cir.1999).

In an unusual turn of events, the Federal Circuit will not be sitting for oral arguments this August. I imagine there will be lots of work being done at the court — just no oral arguments. I don’t remember a year when the court did not sit in August — so, this might be a first. The schedule for 2027 shows the court will hold oral arguments in August 2027.

Anticipation requires that a single reference “describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (emphasis added). For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim. See, e.g., W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (refusing to find claims anticipated when the prior art references were “unacceptably vague”); see also In re Hughes, 52 CCPA 1355, 345 F.2d 184, 188 (1965); In re Turlay, 49 CCPA 1288, 304 F.2d 893, 899 (1962) (“It is well established that an anticipation rejection cannot be predicated on an ambiguous reference.”).

Wasica Finance GmbH v. Continental Auto. Systems, 853 F. 3d 1272, 1284 (Fed. Cir. 2017).

We have, however, declined to apply the doctrine of prosecution disclaimer where the alleged disavowal of claim scope is ambiguous. For instance, in Northern Telecom Ltd. v. Samsung Electronics Company, 215 F.3d 1281, 1293-95, 55 USPQ2d 1065, 1074-75 (Fed.Cir.2000), the accused infringer relied on remarks made by the inventors to overcome a rejection as the basis for narrowing the broad language of the claims. Having independently considered the prosecution history, we viewed the inventors’ statements as amenable to multiple reasonable interpretations and deemed the remarks so ambiguous that, “[l]ike the district court, we simply cannot tell.” Id. at 1294, 215 F.3d 1281, 55 USPQ2d at 1075. Since the prosecution statements were “far too slender a reed to support the judicial narrowing of a clear claim term,” we declined to apply the doctrine of prosecution disclaimer under those circumstances. Id.; see also Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1347, 60 USPQ2d 1851, 1858 (Fed.Cir.2001) (refusing to limit the ordinary meaning of the claim because the alleged disclaimer in the file wrapper was at best “inconclusive”); Pall Corp. v. PTI Techs. Inc., 259 F.3d 1383, 1393-94, 59 USPQ2d 1763, 1770 (Fed.Cir.2001) (finding that the scope of disclaimer over the prior art reference was ambiguous and thus remanding for clarification), vacated on other grounds, 535 U.S. 1109, 122 S.Ct. 2324, 153 L.Ed.2d 152 (2002); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1326-27, 57 USPQ2d 1889, 1895-96 (Fed. Cir.2001) (refusing to rely on ambiguity surrounding examiner’s silence or patentee’s lack of argument during prosecution to construe claim term); Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372, 57 USPQ2d 1087, 1089 (Fed. Cir.2000) (refusing to narrow the asserted claim based on prosecution disclaimer because “the prosecution history does not support [the infringer]’s argument that the Vanguard inventors `expressly disclaimed’ claim scope beyond products made by co-extrusion”); Serrano v. Telular Corp., 111 F.3d 1578, 1584, 42 USPQ2d 1538, 1542-43 (Fed.Cir.1997); cf. Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378, 49 USPQ2d 1065, 1068-69 (Fed.Cir.1998) (noting that “explicit statements made by a patent applicant during prosecution to distinguish a claimed invention over prior art may serve to narrow the scope of a claim”).

Omega Engineering, Inc v. Raytek Corp., 334 F. 3d 1314, 1324 (Fed. Cir. 2003)