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)
Claim terms are generally given their plain and ordinary meanings as understood by a skilled artisan, when read in the context of the specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). In particular, claim scope can be narrowed “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). This disavowal must be “clear and unmistakable” so as to overcome the “heavy presumption” that claim terms carry their full ordinary and customary meaning. Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1350 (Fed. Cir. 2013) (citation omitted).
FOCUS PRODUCTS GROUP INT’L v. Kartri Sales Co., 156 F. 4th 1259, 1273 (Fed. Cir. 2025)
This past week, Google was able to save countless lives in Venezuela with its earthquake detection system that displayed warnings to Venezuelans using its Android Earthquake alert system. [Link]. That reminded me of this earlier post: [Judge Chen asks: Would a method of predicting earthquakes be patent eligible?], which I will repeat below.
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In a recent oral argument, Judge Chen noted the confusion caused by the Federal Circuit’s §101 case law. He posited a hypothetical as to whether an earthquake prediction system should be patent eligible? You can listen to his hypothetical here:
Judge Moore chimed in that she hopes a case like that will make its way to the Supreme Court, as the Court might actually find something patent eligible and there would be a bookend.
I will add this sound bite to the audio key page for Judge Chen.
In Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., we explained that even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. 620 F.3d 1305, 1315 (Fed.Cir.2010). It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer, there 1367*1367 must be a clear and unmistakable disclaimer.
Thorner v. Sony Computer Entertainment America LLC, 669 F. 3d 1362, 1366-67 (Fed. Cir. 2012).
After browsing the decision today in State of California v. Mullin that has initially struck down the $100,000 fee for H-1B visas, my mind turned to patent fees. It might be an interesting article for someone to analyze when fees imposed by an Executive Branch agency such as the Patent Office rise to the level of a tax. Two recent fee changes would be good vehicles for analysis — namely, (1) the recent fee change that increased fees for some continuation applications, and (2) the recent fee change that imposed fees for citing a large number of references. I think that would make an interesting article.
We find the district court’s concern with “what the invention is” misplaced, and its requirement that the ‘081 drawings “describe what is novel or important” legal error. There is “no legally recognizable or protected `essential’ element, `gist’ or `heart’ of the invention in a combination patent.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 604, 5 L.Ed.2d 592 (1961). “The invention” is defined by the claims on appeal. The instant claims do not recite only a pair of semi-circular lumens, or a conical tip, or a ratio at which the tip tapers, or the shape, size, and placement of the inlets and outlets; they claim a double lumen catheter having a combination of those features. That combination invention is what the ‘081 drawings show. As the district court itself recognized, “what Mahurkar eventually patented is exactly what the pictures in serial ‘081 show.” 745 F.Supp. at 523, 17 USPQ2d at 1357.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed.Cir.1991).
If you started practicing patent law recently, you might not have heard retired Chief Judge Paul Michel during oral argument. Here’s a good snippet of Chief Judge Michel during oral argument from years ago:
