Elbex Video v. Sensormatic Electronics (Fed. Cir. 2007)
Elbex sued Sensormatic for infringement of its patent covering a remote-controllable CCTV system. The district court (Judge Owen, Southern District of New York) granted summary judgment of non-infringement based on prosecution disclaimer of a portion of the scope of the claimed “receiving means.”
Prosecution Disclaimer: During prosecution, the applicant had described the invention as having a “monitor” that receives a coded signal. The claims, however, refer to a seemingly broader “receiving means.” Based on the prosecution statements, the district court found a disclaimer of scope:
“[T]he district court found that the inventor limited the “receiving means” that receives the first code signal to a “monitor”… Implicit in its determination is a finding that the inventor clearly and unmistakably surrendered any claim scope between the “receiving means” that receives first code signals as expressly recited in the claims, and a “monitor” that receives first code signals.”
On appeal, Judge Moore (with Judge Dyk) couldn’t find the “clear and unmistakable” disclaimer.
“First, the statement in the prosecution history is unsupported by even a shred of evidence from the specification…. Second, read in isolation, the statement in the prosecution history could be argued to be a disclaimer. When the prosecution history as a whole is considered, the inventor’s response to the PTO is not as clear…. [Third, the] prosecution statement if taken [as a literal disclaimer] would result in an inoperable system.”
This change in claim construction allowed for a reversal-in-part.
District Court Judge Cote sat by designation on the panel found the disclaimer clear and unambiguous and would have affirmed. (Judge Cote is also from the S.D.N.Y.)
Cybor Corp. v. FAS Techs., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) (“Prosecution history is relevant to the construction of a claim written in means-plus-function form.”).