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   Author  Topic: Big patent case  (Read 1570 times)
Chris Gebauer
Big patent case
« on: Aug 13th, 2004, 8:47am »
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Does anyone know the name or cite of a big patent case a few years ago stating that if you disclaim something in the specification you can not then go try to construe your claims to cover what you disclaimed?
For example if you state something must fall within a specific range in the spec., then you can't go and say your claims should include something outside that range.
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Posts: 68
Re: Big patent case
« Reply #1 on: Aug 13th, 2004, 9:59am »
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Re: Big patent case
« Reply #2 on: Aug 13th, 2004, 7:39pm »
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I'm not sure what case you are referring to.
Generally speaking if something is disclaimed in the
specification in the way you describe, there would seem to
be at least one problem with 35 USC 112 1st paragraph.
That kind of problem should be found during examination.
Maybe your question is not about claiming but rather about
how the claims are construed.
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Posts: 2584
Re: Big patent case
« Reply #3 on: Aug 14th, 2004, 12:06pm »
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I think he's referring to Festo. p;invol=00-1543
I think one of the Justices mentioned that the case was about an exception to an exception to an exception to the general rule that a claim covers what it says it covers.
General rule: Claim covers what it says it covers.
...unless, infringer substitutes an equivalent for a claim element (the "you know what we meant" rule of claim construction -- the Doctrine of Equivalents).
...unless, you amended that claim element during prosecution (Prosecution History Estoppel).
...unless, the amendment was not related to patentability of the claim.
...unless, you forgot to say the amendment was for some reason unrelated to patentability.
...unless, the amendment didn't narrow the claim.
...unless, an amendment to a different, related claim narrows the application as a whole (new case after Festo).
That's it, so far.  Pretty simple, huh?  Wink
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James D. Ivey
Law Offices of James D. Ivey
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