In July 2014, the United States Court of Appeals for the Federal Circuit released two cases, X2Y Attenuators, LLC v. International Trade Commission and Golden Bridge Technology v. Apple Inc., in which the court applied the doctrine of claim scope disavowal to limit claim scope. Generally, claim terms are given their plain and ordinary meaning to one skilled in the art in the context of the specification and prosecution history. However, a patentee may disavow the full scope of a claim by clear and unmistakable limitation in the specification or during prosecution.
In X2Y Attenuators, the Federal Circuit affirmed the International Trade Commission's (ITC) decision that the language of X2Y's patents specifications required limitation of the scope of the claims to a “sandwich configuration” of electrodes. X2Y’s claims required certain electrodes but did not expressly require a sandwich configuration. Nevertheless, the court found that statements in the specification that the sandwich configuration is “an essential element among all embodiments or connotations of the invention” and “universal to all the embodiments” constituted a clear and unmistakable disavowal of claim scope. Notably while some of these statements were included in the specifications of the asserted patents, some statements were only included in patents to which priority was claimed and that were incorporated by reference into the asserted patents. The court stated that incorporated patents are effectively part of the asserted patents, and therefore any disclaimers found in the incorporated patents are part of the asserted patents. Because X2Y had conceded noninfringement should the claimed electrode be limited to a sandwich configuration, the Federal Circuit affirmed the ITC’s determination that Intel did not infringe X2Y's asserted patents.
In the second case, Golden Bridge Technology, Golden Bridge accused Apple of infringing two asserted patents, one of which Golden Bridge had previously asserted in the United States District Court for the Eastern District of Texas. In the Texas district court case, Golden Bridge stipulated a definition of the term “preamble,” a term that was included in Golden Bridge's asserted claims. Subsequently, Golden Bridge submitted this stipulation in an Information Disclosure Statement (IDS) filed with the United States Patent and Trademark Office (USPTO) during reexamination and prosecution of its two patents asserted in this case. Notably, the claims Golden Bridge asserted against Apple were new claims added either during reexamination or prosecution.
The Federal Circuit affirmed the decision of the United States District Court for the District of Delaware that Golden Bridge clearly and unmistakably limited the term "preamble" by requesting that the USPTO expressly consider the stipulated construction submitted with the IDS. Furthermore, the court maintained that an applicant’s remarks submitted with an IDS can be the basis for disavowal of claim scope where, as here, the patentee submits to the USPTO its stipulated construction of a claim term asserting the meaning and scope of the term. While the court suggested that Golden Bridge could have rescinded a disclaimer of the broader claim scope during prosecution, Golden Bridge failed to notify the USPTO that the term "preamble" should be given any other meaning than the stipulated construction submitted with the IDS. Nevertheless, the court qualified its holding by stating that potentially material prior art submitted with an IDS does not generally limit the scope of the claims.
In both of these cases, the Federal Circuit's conclusion to limit the scope of the claims resulted in findings of noninfringement. Therefore while disavowal of claim scope is necessarily a fact-specific determination, applicants should consider as part of drafting and prosecuting a patent application the possibility of disavowal of the full scope of the claims.