Claim Scope Based on Claim Construction Submitted in IDS


Golden Bridge Tech., Inc. v. Apple Inc.

Addressing the doctrine of prosecution disclaimer, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment of non-infringement, finding that an applicant’s stipulation submitted with an Information Disclosure Statement (IDS) during prosecution can limit claim scope.  Golden Bridge Tech., Inc. v. Apple Inc., Case No. 13-1496 (Fed. Cir., July 14, 2014) (Moore, J.).

Golden Bridge sued Apple for infringement of patents directed to an improvement for a Code Division Multiple Access (CDMA) system that reduces the risk of interference between the signals sent from various mobile stations.  In a previous litigation involving one of the same patents, the parties stipulated that the construction of the claim term “preamble” was “a signal used for communicating with the base station that is spread before transmission.”  After the previous litigation, Golden Bridge sought new claims, both in a reexamination and in a continuation application.  During the respective reexamination and continuation prosecutions, the “preamble” stipulation from the previous litigation and the claim construction order were submitted to the U.S. Patent and Trademark Office (USPTO) in an Information Disclosure Statement (IDS) by Golden Bridge.

Golden Bridge asserted the new claims, which contain the construed term “preamble,” against Apple in this case.  The lower court considered the construction from the previous litigation and concluded that it was “still applicable insofar as [it] include[s] spreading prior to transmission.”  The court entered summary judgment based on this construction.  Golden Bridge appealed.

Golden Bridge disputed the district court’s construction on the basis that it was not bound by its stipulated construction from the previous litigation.  Golden Bridge argued that its submission of its stipulated construction to the USPTO in an IDS did not constitute a disclaimer of a broader claim scope.  Golden Bridge cited the long-standing USPTO rule that submissions in an IDS are not admissions that the cited information is material.

The Federal Circuit disagreed, noting that the stipulation “clearly and unmistakably” limited the scope of the claim term.  The Court also found that the IDS submitted was “not a typical IDS” because Golden Bridge did not simply disclose prior art.  Golden Bridge submitted its own stipulated construction of a claim term in the context of the particular patents being reexamined and prosecuted.

The Federal Circuit explained that “an applicant’s remarks submitted with an [IDS] can be the basis for limiting claim scope” and that there was “no meaningful difference between limiting claim scope based on an applicant’s stipulations contained in IDS documents and an applicant’s remarks contained in the IDS itself.  Thus, the Court affirmed summary judgment of non-infringement.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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