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[dab2d]

The argument stated that reference did not apply because it lacked a certain attribute, X. BPAI said the reference did apply. Is the Patentee estopped from now asserting the patent claim covers devices with the certain attribute, X?   

[khazzah]

The argument stated that reference did not apply because it lacked a certain attribute, X. BPAI said the reference did apply. Is the Patentee estopped from now asserting the patent claim covers devices with the certain attribute, X?   

First, IMHO, the fact that the Applicant won at the BPAI has no bearing whatsoever on whether or not prosecution disclaimer will be used to limit claim scope in litigation.

Second, your hypo sounds too simplistic to give rise to prosecution history estoppel (more specifically, prosecution disclaimer).

Whether or not disclaimer arises depends on exactly what you say.

Hypo: My claim includes a widget. Examiner says ref X anticipates. All I say in my argument is (literally): Ref X does not teach a widget. I haven't disclaimed anything.

Hypo: My claim includes a widget. Examiner asserts Ref X and says the blodget in Ref X is the same as your claimed widget. I argue: A widget is not a blodget. I have disclaimed coverage of a blodget.

[dab2d]

Sorry, The applicant lost at the board. The specific argument in the file history was that these types of items, represented by the reference, lack X, therefore the reference is improperly applied. "The reference does not show X, the application (now a patent) requires X, thus it does not meet the requirements of 102." The Board said it does apply and has X. Can the Patentee now assert that items having X fall within the scope of the claim. 

[NJ Patent1]

dab2b:  "Can the Patentee now assert that items having X fall within the scope of the claim?”  IMO: Sure! Patentee can now assert that articles meeting all of the limitations of the issued claim(s), including X, infringe literally or by equivalents.  Per Karen, whatever else you said about X might cabin the range of equivalents of X. (Did you argue that a widget is not a blodget?).  X is still a limitation of the issued claim(s). 

All you (apparently) did is argue the fact of what the prior art discloses, and lost.  This is not even close to classical “argument based estoppel” as I understand it.  Because you did not appeal the decision of the Board, the DC may consider that you “waived” the issue of whether the prior art of record teaches X if your defendant asserts an invalidity defense - but you still have your presumption of validity. 

[patentatt]

Sorry, The applicant lost at the board. The specific argument in the file history was that these types of items, represented by the reference, lack X, therefore the reference is improperly applied. "The reference does not show X, the application (now a patent) requires X, thus it does not meet the requirements of 102." The Board said it does apply and has X. Can the Patentee now assert that items having X fall within the scope of the claim.

I agree with Karen - I don't know of any rule or law stating that estoppel/disclaimer is contingent upon applicant's arguments succeeding.

I had actually thought of this issue before you mentioned it, dab2d.  As you seem to imply, this is horrible policy: if the applicant is held to disclaiming X, then the claim cannot be interpreted to include X to hold against the applicant during prosecution.  Yet, as far as I know, this is precisely what happens.  It would be nice to have a good CAFC case with facts showing that this happens.

The pending case In re Saunders, Fed. Cir. 2010-1529, raises very similar issues.

As for Karen's example and the DOE, the example is based on argument and not amendment.  Arguments alone can introduce both estoppel (barring the DOE) and disclaimer (limiting literal claim scope).  The standard is the same for both: clear and unmistakable disavowal.  That's a high standard.  See, e.g., Omega Engineering, Inc v. Raytek Corp., 334 F. 3d 1314 (Fed. Cir. 2003).  For that reason, I agree with Karen that her first example probably does not satisfy the high standard.  Note that the standard would likely be lower if the applicant had amended the claims.

[dab2d]

This is hard because I do not what to disclose exactly what I am researching. I think that I may have confused everyone.

However the patent was for a blunt object having a top surface. The reference, and the device that is being proposed to be manufacture, is sharp object and comes to a point. The Patentee, during prosecution, made the argument that sharp object does not have a top surface, while his claimed invention does. He went to the board and the board held that the sharp object does in fact have a top surface.

Had the Board not made a decision, would the patentee be estopped from saying that sharp objects are covered by is patent because he claims a top surface (he argued that these sharp objects do not have top surfaces)?

Given the boards decision that the sharp object has a top surface, does this reverse, if there was any, estoppel?     

[NJ Patent1]

Patentatt:  if I’ve correctly understood the OP, nothing was “disclaimed” at all.  At worst, patentee - by failing to appeal the issue - may be “estopped” from arguing that the PA doesn’t disclose X.  Personally, I see no policy problem at all.  Even if all of the elements / limitations of a claim are known in the art, a claim including all of these known elements might still be patentable.  How are these elements arranged?  When so arranged, do they cooperate to produce an unexpected result?  In my view, applicants don’t disclaim elements per se, they disclaim either scope or right-to-exclude, and may be precluded from making an argument that contradicts an argument made before the Office.  . 

Any language in case law notwithstanding, as a practical matter, I’m not sure I can buy into the argument that the standards for argument-based and amendment-based estoppel are effectively the same.  Assuming arguendo that they are, burdens of proof are IMO anyway different.  Claim amendments can create a rebuttable presumption of surrender.  Arguments don’t get such a presumption, argument based estoppel has to be shown from the ground up - why I’m very reluctant to use it in an opinion. 

[khazzah]

Given the boards decision that the sharp object has a top surface, does this reverse, if there was any, estoppel?     

Never heard of such a doctrine. That is, I know of no way to reverse the effects of prosecution disclaimer (aka argument-based-estoppel).

If I’ve correctly understood the OP, nothing was “disclaimed” at all. 

The OP clarified/added more facts by saying:

The Patentee, during prosecution, made the argument that sharp object does not have a top surface, while his claimed invention does.

Isn't that a disclaimer of reading the claimed top surface to cover the [tip of] a sharp object?

[Presumably the reasoning here is that there is no surface at all at the tip, since it narrows to a point?]

[khazzah]

At worst, patentee - by failing to appeal the issue - may be “estopped” from arguing that the PA doesn’t disclose X. 

So once you argue "prior art doesn't teach claimed element X" at the BPAI, then fail to appeal to Fed Cir, you may be estopped from bringing up the same argument in litigation?

If you make the same argument in prosecution, but don't appeal, can this give rise to estoppel?

[NJ Patent1]

"Isn't that a disclaimer of reading the claimed top surface to cover the [tip of] a sharp object"?

Karen:  I guess I missed that, or posts crossed.  Yes, IMO that’s a decent argument-based estoppel argument that a sharp point is not a top surface, as that term is used in the claims. 

"So once you argue "prior art doesn't teach claimed element X" at the BPAI, then fail to appeal to Fed Cir, you may be estopped from bringing up the same argument in litigation?"  If you lost the point and fail to appeal, yea, I’d argue that if it had a fair hearing and was somehow central to Board's decision.  But wait a minute! according to the OP, applicant (now a patentee) came away from the Office (Board) with allowed claims that include element / limitation X and with which they were satisfied.  How? Why?  The agency found, as a matter of fact, that PA disclosed X.  There must have been other arguments for patentability of the claims reciting X, like no articuable reason to combine?  But applicant failed to appeal that there was no substantial evidence to support the finding that X was taught. 

"If you make the same argument in prosecution, but don't appeal, can this give rise to estoppel?"  Karen, what’s the procedural posture here?  Examiner says PA discloses X and you don’t argue, accept arguendo that X may be disclosed, but prevail anyway on say, no motivation / hindsight reconstruction.  Claims reciting X get allowed w/ no need to appeal to the Board.  The “fact” of whether X was disclosed was not finally determined by the agency and was never even argued by applicant.  No final agency determination to appeal from.  I say I’d be free to raise it, but I prevailed on other grounds anyway.

Getting back to the OP.  The questions is deceptively simple; is each and every limitation of the claim, A, B. C. D. and X, whether it has patentable weight or not, found in the accused device, literally or equivalently (you noted how equivalents could get cabined).  A court can’t write X out of the claim whether it has "patentable weight" or not.  Construction of “X” is a different issue. 

[khazzah]

Getting back to the OP.  The questions is deceptively simple; is each and every limitation of the claim, A, B. C. D. and X, whether it has patentable weight or not, found in the accused device, literally or equivalently (you noted how equivalents could get cabined).  A court can’t write X out of the claim whether it has "patentable weight" or not.  Construction of “X” is a different issue. 

Perhaps I'm misunderstanding you ... but as a practical matter, claim construction is often dispositive of infringement. I read OP's post to ask

1. Will claim scope of element 'top surface' be construed to NOT cover a sharp point because of arguments made in prosecution.
2. And does the Board's decision reverse the argument-based estoppel

So while the court can't write out "top surface," if the court narrowly interprets "top surface" to exclude the accused infringer, seems like the effect is the same.

[NJ Patent1]

Perhaps I'm misunderstanding you ... but as a practical matter, claim construction is often dispositive of infringement.  No debate from me on that point.  Prosecution history, when in evidence (when is it ever not?) can inform construction (Phillips?)

So while the court can't write out "top surface," if the court narrowly interprets "top surface" to exclude the accused infringer, seems like the effect is the same.  Per above, 100% in agreement.  I just missed / overlooked / simply did not read the changes to the “facts”   

[khazzah]

If you lost the point and fail to appeal, yea, I’d argue that if it had a fair hearing and was somehow central to Board's decision. 
[vs.]
Examiner says PA discloses X and you don’t argue, accept arguendo that X may be disclosed, but prevail anyway on say, no motivation / hindsight reconstruction.  Claims reciting X get allowed w/ no need to appeal to the Board.  The “fact” of whether X was disclosed was not finally determined by the agency and was never even argued by applicant.  No final agency determination to appeal from. 

Gotcha. Thanks for the cogent explanation.