Uship Intellectual Properties v. U.S.

Prosecution Disclaimer Could Result in That Embodiment Not Being Covered by the Claims

12-5077

May 08, 2013

Damon, Sean D.

Decision

Last Month at the Federal Circuit - June 2013

Judges: Dyk, Bryson, Moore (author)

[Appealed from: Court of Federal Claims, Judge Braden]

In Uship Intellectual Properties, LLC v. United States, No. 12-5077 (Fed. Cir. May 8, 2013), the Federal Circuit affirmed the Court of Federal Claims’ (“CFC”) construction of “validating” and affirmed the CFC’s grant of SJ of noninfringement.

Uship Intellectual Properties, LLC (“Uship”) filed the lawsuit in federal court in July 2008 against the U.S. Postal Service (“USPS”). IBM Corporation (“IBM”), which later joined the case as a third-party defendant, manufactured the accused technology.

The patents-in-suit are directed to systems and methods of processing packages for shipment. Only one claim of each asserted patent was at issue in the appeal, and both claims recite “[a] method of mailing parcels and envelopes using an automated shipping machine” in the preamble. Slip op. at 3 (alteration in original).

The central issue in the appeal was “whether the claimed ‘validating’ step can be carried out only by an automated shipping machine, or whether a human being may perform this step.” Id. During prosecution of the parent application of the patents-in-suit, the examiner asserted that the pending method and apparatus claims covered two distinct inventions, and required the applicant to restrict the invention. The applicant traversed the restriction requirement, arguing that all the claims were drawn to a single invention because the method claims “specifically recite in the preamble . . . ‘using an automated shipping machine’ rather than specifically reciting at each step that the step is performed by the automated shipping machine.” Id. at 5 (citation omitted). Neither party disputed that the preamble was a claim limitation.

The Federal Circuit agreed with the USPS and IBM that the “validating” step is limited to an automated shipping machine. But the Court did not find persuasive that the appearance of the phrase “using an automated shipping machine” in the preamble raises a presumption that every step of the claimed method must be performed by a machine. The Court stated, “The question of which steps of the claimed process must be performed by a machine will be answered by the claim language, the intrinsic record, and any relevant extrinsic evidence.” Id. at 7. The Court held, however, that the CFC’s construction limiting the “validating” step to being performed by a machine was correct because of the doctrine of prosecution disclaimer.

The Federal Circuit found no support for Uship’s argument that prosecution disclaimer applies only when an applicant attempts to overcome a claim rejection. The Court explained that the applicant’s statements to the PTO characterizing its invention might give rise to a prosecution disclaimer. “[I]n our prosecution disclaimer inquiry, ‘we examine the entire prosecution history.’” Id. (quoting Seachange Int’l, Inc. v. C-Cor Inc., 413 F.3d 1361, 1372 (Fed. Cir. 2005)). The Court focused on the applicant’s arguments during prosecution, noting that the applicant stated that the claims “specifically recite in the preamble a method of mailing parcels . . . ‘using an automated shipping machine’ rather than specifically reciting at each step that the step is performed by the automated shipping machine.” Id. at 5. Thus, the Court reasoned that the applicant characterized “using an automated shipping machine” in the preamble as equivalent to “specifically reciting” that phrase at each step of the method. Therefore, the Court held that a patent applicant’s response to a restriction requirement may be used to interpret patent claim terms or as a source of disclaimer. Id.

Having agreed with the CFC’s construction, the Federal Circuit affirmed the CFC’s grant of SJ of noninfringement.

Summary authored by Sean D. Samon, Esq.