Global argument in PTO response limits scope of all claims

Peer_networkSeaChange Int’l. v. C-Cor (Fed. Cir. 2005).

In another warning to attorneys, the CAFC has limited the term “network for data connection” to include point-to-point connections based on a patent applicant’s response to a first office action.

Seachange sued C-Cor for infringement of its patent on a computer cluster for redundantly storing data. After claim construction in favor of Seachange, C-Cor stipulated to infringement and then lost invalidity issues at trial. 

On appeal, C-Cor argued that the lower court’s improperly applied an ordinary meaning to claim terms whose scope had been disclaimed during prosecution. The CAFC agreed with C-Cor, finding that “Applicant’s response to the First Action was a deliberate surrender of claim scope, unmistakable in its effect because it is not suitable to multiple interpretations.”  Interestingly, the court rejected SeaChange’s arguments to distinguish claim 1 that specifically called out the point-to-point system from claim 37 that did not do so — finding that applicant’s “global arguments” in the Office Action Response applied to all the claims.

As Professor Joseph Miller correctly states, this case also shows that the use of dictionaries “appears to be alive and well in Federal Circuit claim construction.  In this case, the court relied extensively on The New IEEE Standard Dictionary of Electrical and Electronics Terms.