Use of “present invention” in prosecution history

While not mentioned in the court’s opinion, the Federal Circuit panel that heard oral argument in Catch Curve, Inc. v. Venali, Inc., 2009-1121, (January 22, 2010) inquired about  a statement in the prosecution history that used the phrase “the present invention.”  The court was trying to determine whether the term  “fax protocol” of the patents should be construed to include packet switched network communications.  A reference had been cited in the prosecution of one of the patents and that reference used packet switched network communications.  The Applicant responded to the rejection by admitting that packet switched network communications would be encompassed by “the present invention” but that the cited reference could be distinguished on other grounds.  Judge Bryson focuses on this issue in the following sound bite: [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the court’s opinion here: [Read].

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