What Constitutes Disavowal – Patent Drafting Danger

8.14.15

In Pacing Technologies, LLC v. Garmin Technologies, Inc. (see previous post for a discussion of that case), the U.S. Court of Appeals for the Federal Circuit provided examples of circumstances where it had found disavowal or disclaimer that compelled departure from the plain meaning of claim terms. According to the court, it has found disavowal or disclaimer:

• Based on clear and unmistakable statements by the patentee that limits the claims, such as “the present invention includes,” “the present invention is,” or “all embodiments of the present invention are,”
• When the patent specification indicated that, for “successful manufacture,” a particular step was “required,”
• When the specification indicated that the invention operated by “pushing (as opposed to pulling) forces” and then characterized the “pushing forces” as “an important feature of the present invention,” and
• When the patent repeatedly disparaged an embodiment as “antiquated,” having “inherent inadequacies,” and then detailed the “deficiencies [that] make it difficult” to use.

As the court explained, when a patentee “describes the features of the ‘present invention’ as a whole,” he or she signals that the description limits the invention’s scope.