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| Authored by: Anonymous on Wednesday, July 10 2013 @ 06:55 AM EDT |
Is there even a requirement that what you tell the USPTO
matches what you tell the court?
They're for different things. You tell
the USPTO things to get
them to grant the patent, then you tell the court
things to
get them to find it infringed.
Actually, yes -
particularly as of one of the recent Supreme Court patent decisions (I think
Myriad). They specifically called out using one set of rules to get the patent
and another when trying to enforce it. [ Reply to This | Parent | # ]
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| Authored by: alanyst on Wednesday, July 10 2013 @ 10:35 AM EDT |
According to Samsung's brief, case law does constrain a
patent holder to be
consistent between its arguments to the
USPTO and to the courts. If Samsung's
arguments are correct
as a matter of law, then Apple's concessions about Claim
19
to the USPTO are binding on Apple in its litigation over the
claim.
("[T]hrough statements made during prosecution
or
reexamination an
applicant for a patent or a patent owner, as the case may
be,
may commit to a particular meaning
for a patent term, which meaning is then
binding in
litigation."); Cole v. Kimberly-Clark Corp.,
102 F.3d 524,
532 (Fed. Cir. 1996) (finding patentee's
statements made during reexamination
to
distinguish prior art to be binding in interpreting patent
claims).
Moreover, it is also well established that "
[c]laims may not be construed one
way in order to obtain
their allowance and in a
different way against accused
infringers." Southwall
Technologies, Inc. v. Cardinal IG Co., 54
F.3d
1570, 1576 (Fed. Cir. 1995), cert. denied 516 U.S. 987
(1995)(citing Unique
Concepts, Inc.
v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991). As a
result, the construction that Apple
persuaded the PTO to adopt during the
reexamination is
binding on Apple in proceedings in this
Court.
[ Reply to This | Parent | # ]
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