Clear and Unmistakeable Disavowal Found in an IDS

In Golden Bridge Tech v. Apple, [2013-1496] (Fed. Cir. 2014), the Federal Circuit affirmed the district court’s grant of summary judgment that Apple does not infringe the asserted claims of U.S.Patent Nos. 6,574,267 and 7,359,427.

The Federal Circuit concluded that the patent owners submissions during prosecution of its stipulated construction for the term preamble constituted a disclaimer. The Federal Circuit said that while it generally construes terms according to their plain and ordinary meanings to one of ordinary skill in the art, it departs from that meaning where there is disclaimer.  As parts of an Information Disclosure Statement filed in a reexamination and in patent application, the patent owner submitted a stipulation from prior a litigation as to the meaning of the claim term “preface.”

The patent owner argued that the mere submission of an IDS did not work a disclaimer, by the Federal Circuit disagreed, noting that the patent owner submitted the information with a request that the PTO “expressly consider” it.

TIPAn Information Disclosure Statement should perhaps include a statement that the submission of the information does not effect any express or implied disclaimer.  It may also be a good practice of included a statement in all continuations and divisionals rescinding express or implied disclaimer made in any parent or related application.